Delhi High Court

Agc Flat Glass Europe Sa vs Anand Mahajan And Ors. on 10 September, 2009

Author: Manmohan Singh

.*         HIGH COURT OF DELHI : NEW DELHI


+          I.A. No. 13519/2007 in CS (OS) No. 593/2007

                                  Reserved on: April 23, 2009
%                                 Decided on: September 10, 2009


AGC Flat Glass Europe SA                                     ...Plaintiff
                    Through       : Mr. Pravin Anand with Ms. Swathi
                                   Sukumar and Ms. Tusha Malhotra,
                                   Advs.

                   Versus
Anand Mahajan and Ors.                                     ...Defendants
                   Through        : Ms. Rajeshwari H., Adv.

Coram:

HON'BLE MR. JUSTICE MANMOHAN SINGH

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

2. To be referred to Reporter or not?                                Yes

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

MANMOHAN SINGH, J.

1. The plaintiff has filed I.A. No. 13519/2007 under Sections 57

and 58 of the Patent‟s Act, 1970 read with Section 151 of the Civil

Procedure Code, 1908 for an amendment in Claim 1 of its specifications.

The present suit has been filed by the plaintiff for permanent injunction

restraining infringement of Indian patent no. 190380, rendition of

accounts, delivery up and damages.

2. The brief facts of the case are that the plaintiff claims to be a

global leader of glass and mirror technologies. The plaintiff invented a

product called „Mirox New Generation Ecological Mirrors‟ (hereinafter

referred to as „MNGE‟), which is a mirror without a copper or lead layer,

is obtained through an environmentally friendly process and is available

at the traditional selling price. The said invention of the plaintiff is

patented under Indian Patent No. 190380 being "a mirror with no copper

layer and process for manufacturing the same."

3. The claims of the plaintiff‟s above-mentioned registered

patent read as under:

"1) A Mirror with no copper layer comprising:

             i)     a vitreous substance,
             ii)    at least one material selected from the group

consisting of bismuth, chromium, gold, indium, nickel, palladium, platinum, rhodium, ruthenium, titanium, vanadium and zinc at the surface of the said substrate,

iii) a silver coating layer on the surface of the said substrate, said silver layer optionally comprising at least one material selected from the group consisting of tin, chromium, vanadium, titanium, iron, indium, copper, and aluminum present at the surface of the silver coating layer and/or traces of silane; and

iv) at least one paint layer covering said silver coating layer.

The process of manufacturing the above-said product as mentioned in

Claim 1 has also been patented and the details of the same have been

provided in the plaint.

4. The plaintiff‟s mirrors are unique as they have copper free

metal coatings and the protection paint used is lead free. This offers

improved corrosion resistance in the mirror therefore affording in the

mirror longevity of existence. In around early 2006, the plaintiff came

across the defendants‟ mirrors being manufactured and sold under the

name „SGG Miralite Evolution‟. The testing of a sample of the

defendants‟ product by a senior research scientist in the scientific

analysis department of the plaintiff‟s R&D centre in Belgium proved

that the defendants‟ product is the same as the plaintiff‟s and therefore is

an infringement of the plaintiff‟s registered patent.

5. The defendants have put up various arguments and objections

against the plaintiff‟s case. Broadly, the defendants have contended that

the plaintiff waived its rights to object to the defendants‟ use of the

above-stated mirror technology by virtue of its agreement with defendant

no. 2 dated 18th December, 2003. Further, the plaintiff‟s patent has been

wrongly obtained as the said „inventive‟ mirrors are anticipated by prior

art. Further still, the plaintiff‟s suit is barred by limitation as contrary to

the plaintiff‟s averment that it came across the defendants‟ product in

2006, the plaintiff was aware of the same since 2001-03.

6. In the present application, the plaintiff has stated that it has

gone through the prior art citations filed by the defendants and wishes to

amend its Claim 1 in Indian Patent no. 190380 and insert "a sensitizing

material, typically tin" in clause (ii). The plaintiff has averred that the

amendment sought satisfies all the requirements of Section 59 of the

Patents Act, 1970 as it is by way of an explanation clarifying the scope

of the plaintiff‟s invention in the light of the aforesaid prior art. Further,

the amendment pertains to matter already disclosed in the specifications

and does not fall outside the scope of the un-amended specifications.

The plaintiff has submitted that the amendment is necessary for proper

adjudication of the dispute between parties and also that the same would

cause no prejudice to the defendants as the amended claim sought is

narrower in scope than the original claim.

7. In their reply, the defendants have contended that the present

application has not been filed at the appropriate forum as provided under

Section 57 of the Patents Act, 1970. It is further contended that the

amendment sought by the plaintiff is not by way of explanation but is

only a last attempt on the former‟s part to evade revocation of its

wrongly registered patent. The amendment adds new matter to Claim 1

and varies its scope, i.e. the proposed amendment falls beyond the scope

of the claim of the specification before amendment, which the

defendants have submitted is impermissible in law. Also, the defendant

has referred to para 9 of the plaint wherein the plaintiff has specified its

inventive product and nowhere has „tin‟ been used as a sensitizing

material or otherwise. Further, the plaintiff‟s contention of narrowing

down of the scope of its Claim is bogus as the sought amendment is an

addition and therefore enlarges the said scope. The defendants have also

contended that the amendment sought is not at all necessary for proper

and effective adjudication of disputes between the parties.

8. The defendants have stated that with the proposed

amendment, the plaintiff wishes to create a new monopoly as regards a

new product as the proposed amendment would result in changing of the

product originally patented. Further, the amendment has been sought to

allegedly to overcome/clarify prior art, but no such prior art has been

specified in the application.

9. Another argument of the defendants is that the plaintiff has

filed another suit being CS (OS) No. 594/2007 against some other party

for infringement of the same patent as in the present suit. An application

under Order 39 Rule 1 and 2 has also been filed in that suit. However, no

amendment seeking to explain/clarify the said patent has been filed in

that case. The last contention put forward by the defendants is that the

amendment which is the subject matter of the present application has

been sought after 12 years of grant of the patent and plaintiff must have

had knowledge as regards usage of tin in its product. Despite this, the

plaintiff did not amend its claim previously and in fact is suing people on

the basis of the unamended patent which according to him now, is

unclear/ambiguous etc. Further, inclusion of tin in the process would

render the product unpatentable as the same has been in public domain

since decades and the same has been sought only with the aim of

bringing the defendants‟ product within the ambit of its amended

registered patent.

10. As regards the last contention of the defendants, the plaintiff

without admitting that the said contention is true has submitted that the

scope of the present application is not whether the amended claim would

be a valid one but whether the amendment can be allowed under

Sections 57, 58 and 59 of the Patents Act, 1970.

11. I have gone through the submissions of the parties and

carefully studied the case law referred by them and otherwise. Section

58 and 59 of the Patents Act, 1970 state as under:

Section 58 : (1) In any proceeding before the High Court for the revocation of a patent, the High Court may, subject to the provisions contained in section 59, allow the patentee to amend his complete specification in such manner and subject to such terms as to costs, advertisement or otherwise, as the High Court may think fit, and if in any proceedings for revocation the High Court decides that the patent is invalid, it may allow the specification to be amended under this section instead of revoking the patent.

(2) Where an application for an order under this section is made to the High Court, the applicant shall give notice of the application to the Controller, and the Controller shall be entitled to appear and be heard, and shall appear if so directed by the High Court.

(3) Copies of all orders of the High Court allowing the patentee to amend the specification shall be transmitted by the High Court to the Controller who shall on receipt thereof cause an entry thereof and reference thereto to be made in the register.

Section 59 : (1) No amendment of an application for a patent or a complete specification shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of correcting an obvious mistake, and no amendment of a complete specification shall be allowed the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.

(2) Where after the date of advertisement of acceptance of a complete specification, any amendment of the specification is allowed by the Controller or by the High Court, -

a. the amendment shall for all purposes be deemed to form part of the specification;

b. the fact that the specification has been amended shall be advertised in the Official Gazette; and c. the right of the applicant or patentee to make amendment shall not be called in question except on the ground of fraud.

(3) In construing the specification as amended, reference may be made to the specification as originally accepted.

12. In support of the plaintiff‟s contention as regards the scope of

the amended claim, the plaintiff has cited Baker Perkins Ltd.'s

Application (1958) RPC 267 decided by Mr. Justice Lloyd-Jacob. While

deciding whether or not the amendment of the patent ought to be

allowed, it was observed as follows (at page 273):

"As regards the first point, Mr. Lochner referred to a number of reported cases in which an amendment which imported into a claim a limiting feature from the description was refused on the ground that the amended claim would claim a new combination - an invention different from that originally claimed. These cases were decided under the Acts prior to the 1949 Act, when one provision was that an amended claim must not claim an invention substantially larger than or different from that of the original claim, a provision not to be found in Section 31 of the 1949 Act...

The section is clear that an amended claim may not be larger than the original claim - it must fall wholly within its scope - but so long as it does this, there is no requirement that it shall not be different...

A very common form of amendment when a claim for a piece of mechanism proves to have been drawn too widely is the addition to the claim of some additional feature of construction so that the scope of the original combination is cut down to that of a sub-combination. For example, amendments which allow an appendant claim to be combined with the main claim are constantly allowed provided that the sub-combination is, in truth, a narrowing down of the original combination and not the formulation of an entirely different one...

If limitation to a sub-combination, properly falling within the scope of the original wider combination, discards or eliminates from the invention claimed everything except this sub-combination, I think such amendment must come within the meaning of disclaimer..."

When appealed against, this issue was affirmed by the learned judge in

the following words (at page 276):

" ...amendment so as to limit the scope of the specification to a sub-combination which was within the original claim is disclaimer, and the absence of an appendant claim in the original document as to such sub-combination cannot of itself be a reason for refusing amendment."

12 A. The plaintiff has also referred to Merck & Co. Inc.'s

Application (1952) 69 RPC 285 wherein the words "or by an obvious

chemical equivalent thereof" were sought to be added to a claim by

amendment. The following portion therein is relevant (at page 288) :

"...The amendment sought merely expresses with clarity what a true construction of the specification would inevitably secure to the unamended document, and they lead neither to the claiming nor description of new matter, nor to any variation in the scope of the claims."

12 B. The plaintiff also cited Gillette Safety Razor Company v.

Luna Safety Razor Company Ltd. (1910) 27 RPC 527 wherein the word

„safety‟ was allowed to be added by way of amendment/disclaimer to

razor in the relevant specification as it was observed that the word

„razor‟ was used as a genus and the word „safety razor‟ as the species.

12 C. The Polymer's Corporation's Patent (Amendment P.A.T)

(1972) RPC 39 has also been referred to by the plaintiff while placing

emphasis on the meaning of „explanation‟ in the context of patent

amendment. The pertinent portion of the same is produced hereinbelow:

"...it can be used for the purpose of turning an ambiguous specification into a clear specification but not for the purpose of turning an insufficient description into a sufficient description. I think the test as to whether or not an amendment can properly be regarded as being by way of explanation can be applied on the same lines...The deletion of these words turns what can be regarded as an unambiguous specification into a clear specification."

13. As per the defendants, the first three cases referred to by the

plaintiff are not applicable to the present case as none of them concern

adding of any new material to a claim which is not already part of the

original claim. Further, the last judgment referred to by the plaintiff

concerns deletion of words and not addition. The defendants have relied

upon the following cases :

13 A. In support of their contention that the plaintiff‟s application

should be dismissed for want of disclosure of prior art in light of which

the amendment is claimed to be sought, the defendants have relied upon

Waddingtons Ltd.'s Patent (1986) RPC 158 wherein it was held as

follows ( at page 158):

"(3) Where amendments were proposed to distinguish an invention from prior art, the Comptroller must have particulars of that prior art so that he might take it into account in the exercise of his discretion."

13 B. In support of their contention that the plaintiff is trying to

include tin in its patent claim to take unfair advantage of its knowledge

of the fact that tin is present in the defendants‟ product and lacking in the

former‟s product and so as to manipulate the defendants‟ product into

infringing its registered patent, the defendants have relied upon Smith

Kline & French Laborotaries Ltd. v. Evans Medical Ltd., 1989 (1) FSR

561. It has been observed in this case that (at page 569),

" The discretion as to whether or not to allow amendment is a wide one and the cases illustrate some principles which are applicable to the present case. First, the onus to establish that amendment should be allowed is upon the patentee and full disclosure must be made of all relevant matters. If there is failure to disclose all relevant matters, amendment will be refused. Secondly, amendment will be allowed provided the amendments are permitted under the Act and no circumstances arise which would lead the court to refuse the amendment. Thirdly, it is in the public interest that amendment is sought promptly. Thus, in cases where a patentee delays for an unreasonable period before seeking amendment, it will not be allowed unless the patentee shows reasonable grounds for his delay... Fourthly, a patentee who seeks to obtain an unfair advantage from a patent, which he knows or should have known should be amended, will not be allowed to amend. Fifthly, the court is concerned with the conduct of the patentee and not with the merit of the invention."

13 C. Placing reliance on the same case as mentioned instantly

above and in addition to the third principle contained therein, the

defendants have emphasised that delay vitiates amendment of patent.

Following is the relevant portion (at page 568):

"In that passage, the judge drew attention to the fact that there is a detriment to the general public by the maintenance in an unamended form of a patent which should be amended for a substantial period of time. He also drew a distinction between two categories of delay with knowledge. In the first category is a patentee who knows of the prior art and never thought or should have thought amendment was the right course... In the second category is a patentee who becomes aware of an objection to a patent and takes no steps to amend. In both categories the patentee has knowledge of the prior art which prompted the request for amendment and filed to apply to

amend for a substantial period of time. The difference between the two categories is the unreasonable conduct of the patentee, referred to as culpable by the judge, in not applying to amend when he knew or should have known that he should amend... In the second category the patentee‟s conduct could be excused... Thus, in a case where a patentee who is aware of the facts and either decides not to amend or takes no action, but later changes his mind, the court will refuse to exercise its discretion in his favour unless there is a good and proper reason for his failure to seek amendment promptly."

14. I have gone through the documents filed by both parties as

well as their rival submissions. It is settled law that if an amendment is

put forward to overcome a possible objection to validity based upon a

prior publication it may be relevant to consider whether the amendment

propounded meets the objection arising out of such prior publication. If

it does not, the amendment should be refused. If the patentee has known

of the objection on the prior publication for many years, delay in

applying for amendment will itself be ground for refusal. Further, an

amendment having the effect of converting a non-essential element into

an essential element should not allowed as held in Windsurfing v. Tabur

(1985) RPC 59 at 82 (CA). It would not be out of place here to state that

previously, „tin‟ was nowhere mentioned in Claim 1. However, in Baker

Perkins Ltd.'s Application (1958) RPC 267 and AMP Incorporated v.

Hellerman Ltd. (1962) RPC 55 it has been observed that amendments

which limit the scope of the specification to a sub-combination which

was within the original claim would be a disclaimer (which can be

allowed), and the absence of an appendant claim in the original

document to such sub-combination cannot of itself be a reason for

refusing the amendment.

15. It is also settled law that a patentee who had chosen to make

his claim in a wide and sweeping form (a „covetous‟ claim), and who has

had the advantage of the claim stated in that form for some years, may

not be allowed to limit his claim by amendment to make his patent more

secure. Further, where a patentee knowing the defect in the specification

did not seek to amend his specification but successfully insisted on

retaining it in its original form, it may be a ground for not permitting an

amendment at a considerably later date when the validity of the patent

was attacked by proceedings for revocation (I.G. Farbenindustrie A.G.'s

Patent (1930) 47 RPC 289). But in Chrome-Alloying Co. Ltd. v. Metal

Diffusions Ltd. (1962) RPC 33 it was held that where there is no

evidence to indicate either that the patentee was aware of the defect in

his specification or that he made use of an unjustified wide monopoly

resulting from the defect to seek undue advantage from his competitors,

the court may not refuse leave to amend.

16. I have gone through the judgments cited by the parties and

their rival submissions. I shall now proceed to discuss the law on the

subject.

17. The law which emanates from the authorities cited is quite

akin to the law of amendment. The jurisdiction necessary to allow the

amendment of a claim in the specification vests with the High Court,

once the validity of the patent has been challenged in a patent

infringement suit. The claims can be amended and such amendment may

be allowed provided that is it clarificatory or elaborative in nature and

also, that it does not alter the scope of the claim or introduce any new

claim in the invention which was not present in the original invention.

Thus, the scope of enquiry in relation to amendments in the patent claim

is limited to the extent as to whether it introduces any new claim which

extends the scope of the monopoly rights of the patentee.

18. Of course, the law operates differently when it comes to

narrowing down or crystallizing the claims and apportioning those

claims/subjects which are irrelevant and ultimately making it narrow and

limiting the scope of the invention. An amendment under these

circumstances is allowed and the excluded portion is disclaimed and the

amendment becomes what is called a „disclaimer‟. The disclaimer

doctrine thus means that a right holder is delimiting the scope of the

invention by narrowing down the claims to its inconvenience in a way

which makes the amended claims not inconsistent with the earlier claims

in the original specification. This recourse of disclaimer is adopted by

the right holders in order to clarify the exact scope of the invention, once

they are faced with the invalidity of their patents.

19. I shall proceed to examine the present application within the

parameters of the legal position enunciated above. The original claim of

the registered patent contains the following clause in Claim 1:

"ii) at least one material selected from the group consisting of bismuth, chromium, gold, indium,

nickel, palladium, platinum, rhodium, ruthenium, titanium, vanadium and zinc at the surface of the said substrate,"

The plaintiff seeks to add the words "a sensitizing material, typically tin"

in the above-mentioned clause. The said amendment has been

vehemently opposed on several grounds including that the said

amendment seeks to introduce a new invention and a monopoly, that the

amendment is beyond the scope of the original claim, that the

amendment is sought before the wrong forum, that the element sought to

be added is not present and that a similar amendment is not sought in the

other infringement suit filed by the plaintiff.

20. It is pertinent to note that on going through the entire

specification of the registered patent, it can be easily gauged that the

entire invention works upon a 3 step process which can described as

follows:

a) Sensitizing process

b) Activating process

c) Silvering process

The plaintiff is seeking to add the five words "a sensitizing material,

typically tin" which prima facie appear to be related to the first process

of the invention and does not in any way seem to lie outside the scope of

the invention, thus making the amendment a clarificatory one.

21. It is settled cannon of interpretation that for construing any

instrument or document, the entire document/ instrument has be to read

as a whole so as to infer the intention of the parties and the same is not to

be read in isolation and given an isolated meaning dehors the instrument.

Thus, it is imperative to read the entire specification and to see as to

whether these words "a sensitizing material, typically tin", which are

intended to be added, alter the scope of the patentee‟s invention. The

answer to this question can be easily given once Claim 1 is read along

with Claim 9.

22. From the conjoint reading of the two claims along with the

other claims, it is clearly discernible that the working of the invention is

based on three processes named in para 20 above and the amendment

seeks to clarify the scope of the sensitizing process by mentioning some

sensitizing material, namely tin. Thus, it does not lead to an altogether

new invention and the objections regarding the amendment being

beyond the scope of the original specifications and being inconsistent

with the original claim are meritless.

23. An argument was advanced that the word "tin" was not

present earlier and the patentee is now seeking to introduce a new

monopoly, although by using tin in the said invention it would not have

the monopoly. In this respect, I would say, it is the plaintiff who is

seeking the amendment which is clarifying or narrowing the invention

and the merits of the claims shall be gone into at a later stage. If by any

chance, the defendant has any force in the argument of tin inclusive

invention having no monopoly, the same can be looked into while

looking into the counter claim of the defendant. Thus, the said objection

also fails.

24. It is now relevant to state and reiterate the law of amendment

of plaint. The merit of the case is immaterial and cannot be looked into

while considering an application for amendment, which is clearly stated

in Lakha Ram Sharma v. Balar Marketing Pvt. Ltd. 2003 (27) PTC

175 (SC). It is further trite that the correctness and falsity of the

amendment cannot also be gone into at the stage of the amendment

(Rajesh Kumar Aggarwal and Ors. v. K.K. Modi and Ors. (2006) 4

SCC 385). Further, in Usha Devi v. Rijwan Ahmad & Ors. AIR 2008

SC 1147 it was held as follows:-

"As to the submissions made on behalf of the respondents that the amendment will render the suit non- maintainable because it would not only materially change the suit property but also change the cause of action it has only to be pointed out that in order to allow the prayer for amendment the merit of the amendment is hardly a relevant consideration and it will be open to the defendants-respondents to raise their objection in regard to the amended plaint by making any corresponding amendments in their written statement."

25. In view of the aforementioned discussion and well settled

position of law and bearing the facts of the present case in mind, I find

that the present amendment is merely a clarificatory/ elaborative one and

does not alter the scope of the invention. At best, even if the defendants‟

objections are accepted, the said amendment appears to be a disclaimer

which also cannot come in the way of permitting the amendment and in

fact, the same rather support the amendment. The merits of the

controversy as to whether it is disclaimer or clarification will be decided

at a later stage. The amendment is thus allowed as being a clarificatory

one and the same does not attract the proviso of Section 58 and 59 of the

Patent Act, 1970.

The amended claims shall be filed within four weeks from today.