Delhi High Court
Glaverbel S.A. vs Dave Rose & Ors. on 27 January, 2010
Author: Manmohan Singh
.* HIGH COURT OF DELHI : NEW DELHI
+ I.A No. 3756/2007 in CS (OS) No. 594/2007
% Decided on: 27th January, 2010
Glaverbel S.A. ......Plaintiff
Through: Mr. Sudhir Chandra, Senior Adv. with
Mr. Hemant Singh, Ms. Deepti
Maheshwari and Ms. Mamta Rani Jha,
Advs.
Versus
Dave Rose & Ors. .....Defendants
Through: Mr. Arun Jaitley, Senior Adv. with
Ms. Pratibha M. Singh, Mr. Kapil
Wadhwa, Mr. J.P. Karunakaran and
Ms. Bitika Sharma, Advs.
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. By this order I shall dispose of I.A. No. 3756/2007 filed by
the plaintiff under Order XXXIX Rule 1 and 2 of Code of Civil
Procedure, 1908 (for short „CPC‟) for an ad-interim injunction
restraining the defendants from manufacturing, selling and offering for
sale copper free mirrors infringing the plaintiff‟s registered patent No.
190380.
Case of the Plaintiff
2. In the plaint, it is stated that the plaintiff is a company
incorporated under the laws of Belgium. In India, the plaintiff‟s sales
and marketing etc. are carried out by Glavindia Pvt. Ltd., 507 Gateway
Plaza, Hiranandani Gardens, Powai, Mumbai- 400076, Maharashtra.
3. The plaintiff claims to be engaged in the business of
manufacturing, marketing and selling glasses, mirrors of world class
quality. The plaintiff claims in the suit to be the innovator of the
technology which has lead to the manufacture of mirrors of improved
quality.
4. The plaintiff in the present suit claims to be owner of the
process as well as product patent involving the manufacturing process of
the mirror which is registered as patent No.190380 dated 8th May, 1995
granted on 12th March, 2004 in respect of „a mirror with no copper
layer and process for manufacturing the same‟. The plaintiff has stated in
the suit that the process and product involving the mirror without a
copper layer is an innovative one and the said process and the product is
easily distinguishable from that of the ordinary and conventional mirrors
in the market which contain the copper layer.
5. The plaintiff developed the said technology and got it
patented in India on 8th May, 1995 under Patent No. 190380 and
launched the MNGE mirror in September 1998. As per the plaintiff, the
novelty in Indian Patent No. 190380 resides in a mirror with no copper
layer and a process for preparing the same. Claims for the purpose of
present dispute of patent inter alia reads as under :
"1) A Mirror with no copper layer comprising:
i) a vitreous substrate,
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 a 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.
9) A process for the manufacture of a mirror as claimed in
Claim 1, said process comprising
i) sensitizing a surface of a glass substrate by bringing it into
contact with a sensitizing solution and activating the surface
in an activating step, in which the surface is brought into
contact with an activating solution, whereby the activating
solution contains ions of at least one of the metals of
bismuth (III), chromium (ii), gold (iii), rhodium (III),
ruthenium (III), titanium (III), vanadium (III) and zinc (II),
ii) a silvering step, in which said surface is brought into
contact with a silvering solution and optionally
compromising contacting the silver coating layer with a
solution containing ions of fat least one of the group
consisting of Cr (II), V (II or III), Ti(II or III), Fe(II), In(I or
II), Sn (II), Cu(I) and A1(III) and/or contacting the silver
coating layer with a silane; and
iii) a step for covering the resulting silver layer with one or
more protecting paint layers.
The material at the surface of the (glass) substrate is
preferably palladium; this is preferably present as „islets‟ on
the glass surface (as opposed to being present as a continuous
layer) present in an amount not more than 3.6 mg per square
meter."
6. The plaintiff submits that the inventions protected by the
Indian patent are substantially similar to the plaintiff‟s inventions
protected in United States of America under Patent Nos. US6251482,
US6565217, US6749307 and US6942351. The uniqueness of its
invention, according to the plaintiff, lies in (i) copper free metal coating
over the silver layer and (ii) use of lead free protection paint over the so
coated silver layer.
7. The plaintiff claims that although the said process is known
to the mirror manufacturing industry in broad terms, the contents used in
the said process and the treatment of the same makes it different.
Moreover, as against conventional mirror making which involves four
step procedure, wherein there is a step in between which is the treatment
with copper before silvering, the plaintiff‟s process reduces the same
into three steps and is thus different from the normal manufacturing
process.
8. The plaintiff claims that after the said process, the out come
is a mirror which is without copper layer and the said mirror is durable
in nature and improves the adhesion of the silver coating on the mirror
resulting in the long life of the mirror. Further, the invention is stated to
be useful as the same also enhances the corrosion resistibility of the
mirror.
9. The inventions that are protected by plaintiff‟s Indian Patent
No.190380 are substantially similar to those protected in the United
States of America by plaintiff‟s United States patents US6,251,482,
US6,565,217, US6,749,307 and US6,942,351. Again, these patents were
only granted after a thorough search and examination by the experts at
the United States Patent and Trade Mark Office. By citing the aforesaid
patents, the plaintiff claimed that it is the owner of the subject invention
world wide. The said invention according the plaintiff is an innovative
one.
10. It is submitted that around early 2006, the plaintiff come
across the mirrors being sold and manufactured by the defendants, and
suspecting that these might be infringing the plaintiff‟s Indian patent, a
sample of the same was procured and sent for testing and analysis to the
plaintiff‟s R&D center in Belgium.
11. Thereafter, the R&D centre analyzed the sample of the
defendants using the process of XPS (X-Ray Photoelectron
Spectroscopy) and the result thereof was that the chemical composition
of the defendants‟ mirror was similar to the plaintiff‟s MNGE mirror, i.e.
it had no copper layer, and in fact was a glass sheet substrate with
palladium and tin at the surface (with the palladium present in the form
of islets), a silver coating thereon with tin present at the surface of the
silver coating and two layers of lead free paint covering the said silver
layer.
12. To support the same, the plaintiff has filed the affidavit and
certification of Dr. Pierre Boulangar, a senior research scientist who has
conducted the test on the mirror of the defendants. The results which
came into light are as under:
i. A glass sheet substrate.
ii. Palladium and tin at the surface of the substrate, the
palladium being present in the form of islets on the glass
surface;
iii. A silver coating on the surface of the glass with tin present
at the surface of the silver coating; and
iv. Two lead free paint layers covering the silver layer.
13. The plaintiff alleges that in view of the aforementioned
results, it is evident that the defendants‟ manufacturing process
corresponds to Claim 9 of the plaintiff‟s Indian Patent. The resultant
mirror with no copper layer and lead pigments found also makes it clear
that the defendants‟ mirror is an infringement of the plaintiff‟s patented
mirror.
14. Further, the plaintiff alleges that the defendants are
replicating the steps of the plaintiff‟s patented process, the same being as
under :
(i) Sensitization of the glass surface with tin chloride;
(ii) Activation of the glass surface with palladium chloride;
(iii) Formation of a silver layer and coating thereof with tin
chloride;
(iv) Coating of the resultant layer with lead free paint.
15. Hence in the present application, the plaintiff has alleged that
the defendants are clearly infringing its registered patent no. 190380 by
their activities and are thus liable to be restrained.
16. The plaintiff has contended that it has a prima facie case
evident from the result of the scientific analysis conducted by its R&D
wing in Belgium. Balance of convenience also, as per the plaintiff, lies
in its favour as an injunction would only stop the defendants from using
the plaintiff‟s technology whereas not granting the injunction would cut
at the root of the plaintiff‟s business.
17. Also, it is submitted that the plaintiff has a significant
advantage over its competitors due to its patented mirror and the
chemical process thereof as it has various agreements all over the globe
as regards its product. Grant of licenses generates huge revenue on
account of the restrictive use of the patented product and process. If the
defendants are allowed to continue infringing the plaintiff‟s registered
patent, the revenue as well as the credibility of licenses of the plaintiff
will be affected very negatively.
Plea of the Defendants in their Written Statement and Reply
18. The defendants, in their reply to the present application, have
contended that mirrors without copper/lead layer have been available
before the plaintiff claims to have developed the same. Also, the process
of manufacturing the „MNGE mirrors‟ is not novel as alleged by the
plaintiff as the same is anticipated by prior art.
19. In nut shell, the case of the defendants in substance in the
written statement and reply is enlisted as under:
(a) That the alleged invention is not patentable as it lacks
novelty and the same is anticipated by the prior arts, (the
detailed analysis is discussed in the judgment)
(b) That the alleged invention is short of inventive step, in other
words, the said invention is obvious to a person skilled in
art and thus, the said invention ought not be accorded patent
and is also not worthy of protection
(c) That the plaintiff has failed to disclose that a similar patent/
patent claim which is substantially the same with that of the
impugned patent has been rejected in German Patent office
and in an appeal thereof, it has been affirmed and the said
judgment has attained finalty. The said fact is not disclosed
which has material bearing upon the question of novelty
and obviousness of the same claim in Indian patent and
further it prima facie establishes that the defendants are
raising a challenge to the patent which is worth considering.
(d) That the said invention has not been commercially exploited
in India and thus, the present suit is nothing but thrashing
out the competitor from the market in order to gain
commercial edge in the market without actually exploiting
the invention.
(e) The defendants have also filed the counter claim alongwith
the written statement for revocation of the impugned patent.
20. As regards the first defense, the defendants have submitted
various sources that contain prior art, which anticipate the plaintiff‟s
patent and invention.
21. The description of the prior art is given in the written
statement which reads as under :
A.) BUCKWALTER (US patent 4285992) dated
25.08.1981 "Process for Preparing Improved Silvered
Glass Mirrors"
This patent was filed on 28.01.1980 for an improvement in
the method of making mirrors so that they are less
susceptible to degradation due to weathering. Buckwalter
discloses a mirror production process in which "the cleaned
surface of the glass is contacted with a solution of
lanthanide ions in addition (sic) to a tin or palladium
sensitizing solution before the surface is silvered" (col 3,
lines 13-16). Buckwalter utilizes a tin OR a palladium
solution to sensitize the glass surface. Although
Buckwalter improves upon this process by application of a
solution of Lanthanide rare earth ions, it is clear that those
skilled in the art were aware that mirrors could be made
without the application of a Lanthanide solution.
Buckwalter was also cited in the proceedings for plaintiff‟s
related German Patent, which in fact was rejected by the
German Federal Patent Court.
B.) FRANZ (US Patent No.3,798,050) dated
19.03.1974 "Catalytic Sensitization of Substrates for
Metallization"
The Franz patent was filed on 28.05.1997 and relates to
chemical plating (referred to in the art as electroless plating(
using a new method of sensitizing a substrate to produce a
catalytic surface receptive to the deposition of metal
containing film. Franz discloses a method of coating a
glass substrate with a metal such as silver (i.e. a group B
metal). Franz discloses sensitizing the substrate surface
with tin chloride (sncl2), followed by a rinsing step to
"supersensitize" the surface with PdCl2 or PdCl4 solution
(col. 2 lines 40-46 and col. 5 lines 7-67). Franz explains
in detail that the Palladium acts as a catalyst to improve
adhesion and uniformity of the metal film to on the
substrate (Col. 3, lines 60-65, and col. 8 lies 50-53). After
the substrate has been sensitized using Tin Chloride and
supersensitized using PdCl2 or PdCl4, a metal containing
solution is sprayed on to the substrate to form the metal
coating (col. 6 lines 1-10). Franz also does not mention
any Copper layer.
C.) A publication titled "The Nucleation with
SnCI2-Pd CI2 solutions of Glass before Electroless
plating" by C.H. de MINJER and P.F.J.v.d. Boom
This article confirms that the process of "sensitization" and
"activation" in a Stannous Chloride and Palladium Chloride
solution was widely known. This publication dates back to
December 1973 and clearly teaches the plaintiff‟s alleged
invention. (Response pg. 1644 and 1645).
D.) ORBAN (US patent No.4,643,918) dated 3rd
May, 1985 "Continuous process for the metal coating of
fiberglass"
This patent clearly shows the use of palladium chloride and
tin chloride for activating the surface of fiberglass
filaments.
E.) GREENBERG (US Patent No.3,978,271 dated
st
31 August, 1976)
In this patent, the glass sheet is sensitized with tin salt
which may include Tin Bromide, Tin Lodide, Tin Sulfate,
etc. Thereafter, activation is carried out using a Palladium
salt. The patent clearly shows that the process of activation
and sensitization using Tin and Palladium was known in the
industry much before the plaintiff‟s claimed inventino date.
F.) SHIPLEY- Great Britain Patent No.GB929799
This patent talks about improved metal depositions by
treating the substrate with tin chloride or another tin salt to
catalyze the deposition of a desired metal coating. The tin
salt forms catalytic metal mucleating centres so that the
desired metals can be easily deposited using known
deposition solutions. The deposition solution usually
comprises of nickel, cobalt, copper, silver, gold, chromium
etc. (col. 1 lines 40-55; col. 1 lines 30-35; col. 1 lines 46-
65).
22. In their second defense, the defendants state that Claim 1 as
well as Claim 9 of the plaintiff in patent no. 190380 are not valid as per
the Patents Act, 1970.
23. It is further contended by the defendants that the plaintiff has
concealed various material facts from this court as well as from the
Patent Office. The plaintiff has failed to disclose relevant information,
contrary to the mandatory provision of disclosure in Form 3 as per
Section 8 of the Patents Act. A patent application no. 10157294 was
filed by the plaintiff on 22.11.2001 in Germany as regards a similar
„invention‟.
24. As alleged by the defendants the claim of the plaintiff was
rejected, where after the amended claim was filed to the following effect:
"Process for preparing a mirror without copper layer,
comprising a sensitizing step, wherein said surface of a glass
substrate is contacted with a sensitizing solution, an
activating step, wherein said surface is contacted with an
activating solution, the activating solution containing an ion
of at least one of the metals bismuth (III), chromium (II), gold
(III), indium (III), nickel (II), palladium (II), platinum (II),
rhodium (III), ruthenium (III), titanium (III), vanadium (III)
and zinc (II), a subsequent silvering step, wherein said
surface is contacted with a silvering solution, and a step of
covering the resulting silver layer with one or more protective
layers of paint."
25. It is alleged that the plaintiff‟s application was rejected after
which it filed an appeal with the Federal Patent Court proposing several
new amendments, but this appeal was also rejected. The rejection was
explained by reference to various prior art references being US Patent
4288992, German Application DE 4135800 A1, German Patent DE
2136348 B2, Ullmann‟s Encyclopedia of Technical Chemistry, 4 th
Edition, Volume 21, published by Verlag Chemie, Weinheim 1982,
pages 633 to 638. The plaintiff failed to disclose any of this information
to the Indian Patent Office.
26. The defendants submit that the plaintiff has also concealed
that in its most closely related patent as regards the Indian patent no.
190380, which is US Patent no. 6251482, Claim 1 was rejected and
amended almost 8 times before finally being accepted. The US Patent
Examiner stated that the plaintiff‟s patent was based on prior art. It was
only when the plaintiff argued that palladium was used as a catalyst in
the prior art references whereas in the plaintiff‟s invention, palladium
was not used as a catalyst that the said patent application was allowed.
The Indian application contained nothing to the effect of palladium not
being used as a catalyst and hence the same is still based on prior art.
27. It is contended that the defendants have been manufacturing
copper free mirrors in India way back since year 2002 and the balance
of convenience surely lies in favour of the defendants. The sales of the
defendants are given below :
Year Quantity (In Sq. Mtrs.)
2002-03 3,259,284
2003-04 3,736,325
2004-05 3,608,493
2005-06 3,497,735
2006-07 3,098,039
2007-08 2,965,332
2008-Feb. 09 2,568,246
28. The defendants have also given the steps of the process of
manufacturing their product as follows :
1. A glass is sensitized with Tin Chloride.
2. Glass is super-sensitized with palladium chloride. It acts
as a catalyst and promotes silver film adhesion with the
glass by electrically charging the glass.
3. Glass is activated with Silver Nitrate Solution.
4. Silvering the glass with silver nitrate solution + ammonium
hydroxide.
5. Protect silver layer by passivation and Coating Paints.
29. The defendants thus state that in the present case there is no
infringement, thus no case of injunction is made out.
30. It is stated by the defendants that in view of the above, the
plaintiff has no prima facie case against them and in fact, the balance of
convenience lies on the side of the defendants as the plaintiff is only
trying to cease/pause the defendants‟ manufacturing by relying on their
invalid patent in the meantime using the vacuum in the market to bring
an inflow of their patented product and since the defendants are not
infringing the impugned patent of the plaintiff, this is not a fit case for
grant of injunction.
31. During the hearing of the interim application both the parties
have filed further affidavits in order to support their submission. The
first affidavit was filed on 24th March, 2009 alongwith list of documents
of Mr. George Pilloy designated as Plant and Technical Coordination
Manager of AGC Flat Glass Europe SA. Reply affidavit of Mr. R.B.
Dadu, Company Secretary of defendant No.2 to the affidavit of Mr.
George Pilloy was filed on 6th April, 2009. Rejoinder affidavit of Mr.
George Pilloy was also filed on 1st May, 2009.
32. In another suit filed by the plaintiff being CS (OS)
No.593/2007 in respect of the same patent, the plaintiff sought the
amendment of claim No.1 and filed an application under Sections 57
and 58 of the Patent‟s Act, 1970 read with Section 151 of the Civil
Procedure Code, 1908 being I.A. No.13519/2007 which was allowed by
this Court vide order dated 10th September, 2009. Claim No.1, as it
originally stood, is reproduced herein below :
"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 amended Claim No.1 as prayed for and allowed by
order dated 10th September, 2009 is reproduced hereunder :
1. A mirror with no copper layer comprising :
i) A vitreous substrate,
ii) A sensitizing material, typically tin, and at least
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."
Contentions of the Plaintiff
33. Mr. Sudhir Chandra, Learned Senior Counsel appearing on
behalf of the plaintiff has made his submissions which can be elucidated
as under:
a) Shri Sudhir Chandra submitted that the impugned Patent is
relating to the glass/ silver/ paint mirror without the copper layer.
The said patent has been granted as of 8th May, 1995 and the same
is statutory right emanating from the Act. Thus, according to the
learned Senior counsel for the plaintiff, the said patent rights must
be respected by this court in form of grant of interlocutory
injunction.
b) Secondly, Shri Chandra submitted that the defendants have cited
several alleged prior arts which according to him are relating to
the mirror with copper layer which is ordinary and conventional
form of producing the mirror. The invention according to Mr.
Chandra lies in the underlying process of manufacturing the
mirror without copper layer and the apparatus itself. Thus, it is the
case of Mr. Chandra that all the prior arts are irrelevant for the
purpose of looking into the present patent as the same are relating
to conventional process of manufacturing mirror and there is
fundamental difference between the prior arts and the invention in
question.
c) Thirdly, Mr. Chandra submitted that the defendants have failed to
discharge the onus of proof as envisaged under section 104 A of
the Act while contending the difference in the competing
inventions.
d) Fourthly, Mr. Chandra argued that assuming for the sake of
argument that the prior arts cited are correct, the question still has
to be seen from the perspective of an unimaginative person
normally skilled in the art on the date of the plaintiff‟s patent.
Thus, when seen from that angle, it is questionable as to how the
defendants could have arrived at the same invention causing the
infringement of the plaintiff‟s invention.
e) Fifthly, Mr. Chandra contended that the plaintiff has filed on
record the affidavit of Dr. Pierre Boulanger - who is the scientist
appointed by the plaintiff who conducted the test pointing out
similarities between the two products. The counsel placing
reliance upon the same contended that the same has gone
unrebutted and hence there is no denial to the effect that the
invention and the manufacturing process is the same and no
explanation has been put forth to substantiate about the
manufacturing process of the defendants. It ought to be assumed
and rather believed on prima facie basis that the inventions are the
same and injunction must follow.
f) Sixthly, Shri Chandra contended that the prior arts are to be read
in total in order to find out whether the invention is an anticipated
one. It is not permissible under the law to read one portion of the
claim and there after another to breakdown the invention and the
defendants are seeking recourse to a technique which is popularly
known as Mosiacking.
g) Lastly, the plaintiff counsel has pointed out several similarities
between the plaintiff‟s patent and that of the defendants from the
chart filed alongwith the written submission dated 28 th March,
2009 alongwith plaintiff‟s comments.
Judgments referred by the Plaintiff
34. In support of his contentions, learned senior counsel for the
plaintiff has referred to various cases which are enumerated below :
i) Bajaj Auto Vs. TVS Motor Company Ltd., 2008 (36) PTC
417 (Madras) wherein it was held in paragraph 25 that in a case
where a person creates what is in substance the equivalent of a
patented article, the creation would be an infringement of the
patented article and trifling and unessential variations would be
ignored.
ii) Raj Prakash Vs. Mangat Ram Chowdhary, AIR 1978 Del 1
wherein it was held in paragraph 25 that minor variations in the
two relevant5 products are irrelevant for the purpose of deciding
whether there is infringement and if the infringing article is an
equivalent of the patented article, infringement would be proved.
iii) In Telemecanique and Controls (I) Ltd. Vs. Schneider
Electric Industries SA, 2002 (24) PTC 632 (DB), the Court held
that a monopoly of the patent is the reward for the inventor as a
patent creates a statutory monopoly protecting the patentee
against unlicensed user of the patented device (paragraph 30).
iv) Hind Mosaic and Cements Works & Anr. Vs. Shree
Sahjanand Trading Corp., 2008 (37) PTC 128 (Guj) (DB)
wherein the Court relied upon the principles for grant of interim
injunction laid down in American Cyanamid Co. Vs. Ethicon
Ltd., (1975) 1 All ER 504 held that the „Expert‟s report‟ ought to
have been considered by the Court.
v) Wockhardt Ltd. Vs. Hetero Drugs Ltd. and Ors., 2006 (32)
PTC 65 (Madras) wherein the Court held (in paragraph 17) that
relief by way of interlocutory injunction is granted to mitigate the
risk of injustice to the plaintiff during the period before certain
uncertainties could be resolved and to avoid such injury to the
plaintiff that he cannot be adequately compensated for even if the
uncertainty is eventually resolved in his favour at the trial.
vi) M/s. National Research Development Corporation of India
Vs. M/s. Delhi Cloth & General Mills Co. Ltd. & Ors., AIR
1980 Delhi 132 wherein it was held as under :
"7. For the grant of temporary injunction, principles
applicable to the infringement of Patent actions are that
there is a prima facie case, that the patent is valid and
infringed, that the balance of convenience is in favor of the
injunction being granted and that the plaintiff will suffer an
irreparable loss. It is also a rule of practice that if a patent is
a new one, a mere challenge at the Bar would be quite
sufficient for a refusal of a temporary injunction, but if the
patent is sufficiently old and has been worked, the court
would, for the purpose of temporary injunction, presume the
patent to be valid one. If the patent is more than six years
old and there has been actual user it would be safe for the
court to proceed upon this presumption."
vii) Farbewerke Hoechst Aktiengesellschaft Vormals Meister
Lucius & Bruning Corporation Vs. Unichem Laboratories and
Ors., AIR 1969 Bombay 255 wherein paragraph 15 it was held
that to anticipate a patent, a prior publication or activity must
contain the whole of the invention impugned; i.e. all the features
by which the particular claim attacked is limited. In other words,
the anticipation must be such as to describe, or be an
infringement of the claim attacked. The same position was also
earlier held in Pope Appliance Corpoartion Vs. Spanish River
Pulo and Paper Mills Ltd., AIR 1929 PC 38.
viii) As regards the technique of mosaic, in H. Millwood Ld. Vs.
H.G. Martin and Biro Swan Ld. the House of Lords held that to
establish anticipation, the appellant must show that some prior
publication has information about the alleged invention equal for
the purposes of practical utility of the suit patent. It is not enough
to make a mosaic of prior publications and to say that the whole
invention has already been disclosed. It was similarly held in
M/s. Bishwanath Prasad Radhey Shyam Vs. M/s. Hindustan
Metal Industries, AIR 1982 SC 1444 that in order to be
patentable a creation should be more than a mere workshop
improvement and must not be a mere collection of more than one
integers or things not involving the exercise of any inventive
faculty.
35. Accordingly, Shri Chandra contended while citing all the
authorities that it can be said with certainty that defendants have not
given a valid explanation for copying the invention pertaining to
manufacturing the mirror without the copper layer rather the defendants
have chosen to challenge the validity of the Patent by citing prior arts
which do not teach as how to arrive at the present invention; the said
prior arts are in piecemeal and some are relating to an altogether
different invention and thus, the trivial similarities with the prior arts are
to be ignored till the time it teaches the entire patent/ claim of the
invention as one has to see the patent while comparing the entire claims;
the invention is sufficiently old to accord protection as the same is a
1995 patent although granted in 2004 and the protection if not granted at
this stage will make the patent redundant. A prima facie case, according
to Shri Chandra, is made out for the grant of injunction and thus, this
court must grant the injunction for the reasons stated above and in view
of his submissions.
36. Learned Senior Counsel Shri Sudhir Chandra has relied upon
the commentary of Terrel on the „Law of Patent‟, 16th Edition para 7-62
at page 250 which reads as under:
"Mosaicing
7-62 The "mosaicing" of individual documents or
prior uses is not permissible, unless it can be shown that
the skilled person, confronted with a particular citation,
would turn to some other citation to supplement the
information provided by the first. Whether he would do so
is a question of fact. Lord Reid said in Technograph vs.
Mills & Rockley [1972] R.P.C. 346 346 at page 355 :
"When dealing with obviousness, unlike novelty, it is
permissible to make a „mosaic‟ out of the relevant
documents, but it must be a mosaic which can be put
together by an unimaginative man with no inventive
capacity."
Contentions of the Defendants
37. Per Contra Shri Arun Jaitley, learned Senior Counsel
appearing on behalf of defendants has strenuously made certain
submissions which can be summarized as follows:
(i) Shri Jaitley submitted that the impugned patent no.190380
lacks novelty which is the first pre requisite for the grant of the
patent. The patent in question is thus subject to challenge as it
lacks novelty or newness. Rather, the copper free mirror
technology is the existing state of the art and the prior arts which
are available further make it evident on the face of it that the
impugned patent lacks novelty. Section 2 (1) (l) of the Act has
been relied which defines the expression new invention under the
Act.
(ii) Shri Jaitley emphatically attacked the subject matter of the
patent by stating that the said copper free mirror manufacturing
process is obvious to the person skilled in the art. Shri Jaitley
submitted that the impugned patent even fails on the second tests
which is the requirement of the inventive step. It is the contention
of Shri Jaitley that patents are accorded to inventions which
qualify the test of inventive step, which means that there must be
technological advancement from the existing state of the art. In the
absence of the same, the invention would become obvious to the
person skilled in the art. In order to substantiate this argument,
Shri Jaitley, Learned Senior Counsel relied upon the definition of
inventive step under section 2 (1) (ja) of the Patents Act, 2005
which reads as under :
"Section 2(1)(ja) : "inventive step" means a feature of an
invention that involves technical advance as compared to
the existing knowledge or having economic significance or
both and that makes the invention not obvious to a person
skilled in the art"
(iii) Shri Jaitley further submitted that there are several prior arts
which if are examined, then the invention becomes obvious to a
person skilled in the art. Shri Jaitley categorized the said prior arts
into the following:
a) Buckwalter US 4285992
b) Franz US3798050
c) Greenberg US 3978271
d) Minjer
e) Shipley
(iv) Fourthly, Mr. Jaitley has contended that the question of
mosaicing does not arise in the present case. The thrust of the
contention of Shri Jaitley is that breaking down of the patent by
citing several art is permissible while looking for obviousness
unlike novelty. In order to support the argument, Shri Jaitley
relied upon the observations of Lord Reid in Technograph v.
Mills & Rockley, (1972) R.P.C. 346 at page 355 which reads as
under :
"When dealing with obviousness, unlike novelty, it is
permissible to make a „mosaic‟ out of the relevant
document, but is must be a mosiac which can be put
together by an unimaginative man with no inventive
capacity."
(v) Fifthly, learned Senior Counsel Shri Jaitley submitted that
there is no infringement as there are marked differences in the
process of the plaintiff and that of the defendants which are seen
below :
Step In In Patented Plaintiff's Claims in In
Conventional Mirror of Suit Patent Guardian's
Mirror Plaintiff mirror
Substrate A Glass A vitreous A vitreous Substrate A Glass
Substrate
Sensitization With Tin With TinNo sensitization With Tin
Chloride Chloride (asmentioned in Claim Chloride
stated in1.
specification) Mentioned in Claim 9
(i) but does not
specify Tin Chloride
Amended Claim 1
states:-
Sensitizing material,
typically tin and at
least one material
selected from
BISMUTH,
CHROMIUM,
GOLD, INDIUM,
NICKEL,
PALLADIUM,
PLATINUM,
RHODIUM,
RUTHENIUM,
TITANIUM,
VANADIUM, ZINC
Super ABSENT ABSENT ABSENT With
Sensitization Palladium
Chloride
Palladium di
chloride
solution is
sprayed on
glass. It acts
as a catalyst
and promotes
silver film
adhesion with
the glass.
[solution code
- RNG
.7252E]
Activation With With Palladium At least one material With Silver
Ammonical selected from Nitrate
Silver Nitrate BISMUTH, Solution.
Solution CHROMIUM,
GOLD, INDIUM, Silver nitrate
NICKEL, soln. is
PALLADIUM, sprayed to
PLATINUM, electrically
RHODIUM, charge glass
RUTHENIUM,
TITANIUM,
VANADIUM, ZINC
Silvering Silvering Silvering Claim 9 (ii) AgNO3 -
Solution Solution A silvering step, in silver nitrate
which said surface is +
brought into contact NH4[OH]
with a silvering Ammonium
solution hydroxide
Silver nitrate
solution is
sprayed along
with
ammonium
hydroxide
solution. A
layer of silver
film gets
deposited on
glass.
Passivation ABSENT ABSENT ABSENT GMP 2000 A
- Metallizing
concentrate
solution +
GMP 2000
B -
Activating
concentrate
solution
Treating with
two different
solutions
simultaneousl
y -
Activating
concentrate
soln.
containing
principally
sodium
hydroxide &
ammonia and
Metallizing
concentrate
solution
containing tin
fluoride and
mineral acid,
which soln is
milky and
opalescence
liquid. The
PH on the
glass is bet. 9
to 9.5 which
is highly
alkaline
media.
Covering Layer covered Contacting the Claim 9 (ii) second ABSENT
silver coating with silver coating part Optionally
protective layer with ions comprising
layer of of at least one contacting the silver
copper of the group coating layer with
consisting ions of at least one of
CHROMIUM, the group consisting
VANADIUM, CHROMIUM,
TITANIUM, VANADIUM,
IRON, TITANIUM, IRON,
INDIUM, INDIUM, COPPER,
COPPER, ALUMINIUM
ALUMINIUM
Paint Paint Paint Claim 9(iii) With one Two layers of
or two protective paint are
layer Paint layers coated one by
one and also
cured
separately in
Baking ovens.
(vi) Sixthly, Shri Jaitley submitted that the challenge of the
defendants to the novelty and obviousness of the impugned patent
process cannot be faulted with and rather the said challenge is a
tenable and credible one. This is also apparent from the fact that
the plaintiff‟s claim relating to the same invention wherein
identical claim is made in the Indian patent is put into question
and rejected by the German Federal court and the copy of the
judgment is also filed with the list of the documents filed by the
defendants. Accordingly, as per learned senior counsel for the
defendants, prima facie substantial and tenable challenge has
been made out against the patent and thus the same has to be
examined and tested during the trial and consequently, it does not
warrant the grant of temporary injunction at this stage.
(vii) The next argument of Mr. Jaitley is that the patent in question
was not commercially exploited in India and the dicta of Franz
Zavier passed by the division bench should be applicable atleast at
the interlocutory stage.
(viii) Mr. Jaitley also argued on balance of convenience stating
that the plaintiff has failed to prove the commercial working of
subject invention in India. It is submitted by the learned senior
counsel that as per plaintiff‟s own admission the plaintiff has not
manufactured the MNGE mirror and was doing business in India
on royalty paying license basis. On the other hand, the defendants
have been commercially manufacturing mirrors in India and as
the business of defendants runs into crores of Rupees, the
comparative hardship and irreparable injury is greater on the part
of the defendants and thus balance of convenience is on favour of
the defendants and has to be seen in view of dicta of American
Cynamide v. Ethicon Ltd.
(ix) Lastly, Mr. Jaitley, learned senior counsel has also
highlighted the comparison between the claims of the plaintiff‟s
several patents wherein there are marked differences in the
number of the claims and the subject of the invention.
38. To counter the submission of the plaintiff that the patent in
question has been working in India, Mr. Jaitley, learned Senior Counsel
has submitted that the alleged statement in Form 27 filed on 17 th
January, 2005, 30th March, 2006, 8th March, 2007 and 20th March, 2008
does not establish the commercial working of the suit patent in as much
as :
All of the stated Forms 27 allegedly show import from
Thailand, Singapore and primarily Indonesia. As per the
Form 3 of the plaintiff‟s patent application, the plaintiff
does not have any patent protection in all these countries.
In fact in Indonesia and Thailand there are applications for
which no status is mentioned. In Singapore there is not
even an application for patent. This obviously means that
in these counties, the technology is in public domain and is
being allegedly imported into India.
However, no document has been produced to show
(i) as to who is the exporter;
(ii) whether such export is under license or what
arrangement, if any & how do the said exporters possess
the so-called patent technology;
(iii) details of such license/agreement not produced before
this Hon‟ble Court.
The affidavit of Mr. George Pilloy does not state as to who
all are their licensees in Europe, Far East, US, South Africa,
China and India through whom they allegedly
„Manufacture‟ the patented glass/silver/paint mirrors
without copper layer First the plaintiff claims
„manufacture‟, then in the very subsequent para of affidavit
claims that the mirror is „sold‟ under License agreement
with ASAHI INDIA GLASS LTD., as well as by way of
import.
No such details of license agreement with ASAHI have
been placed on record.
Decisions referred by the Defendants
39. Learned Senior Counsel for the defendants has also referred
various judgments, some of them are discussed hereunder :
i) M/s. Bishwanath Prasad Radhey Shyam (supra) wherein
paragraph 33 it is noted that grant of a patent or the decision rendered by
the Controller in the case of opposition does not guarantee the validity of
the patent and this position is now expressly provided in Section 13(4) of
the Patents Act. Similar observations can be seen in M/s. Standipack
Pvt. Ltd. Vs. Oswal Trading Co. Ltd., AIR 2000 Delhi 23 wherein
paragraph 15 and 16 make it amply clear that presumption of validity is
not attached to a patent granted by the Controller of Patents,
notwithstanding examination under Sections 12 and 13 of the Act. The
same dictum has been reiterated in Surendra Lal Mahendra Vs. Jain
Glazers & Ors. (Unreported), IA No. 1871/ 1979 and Suit No. 672/1979,
in Bilcare Ltd. Vs. Supreme Industries Ltd., 2007 (34) PTC 444 (Delhi)
(paragraph 16) and in Novartis AG & Anr. Vs. Mehar Pharma & Anr.,
2005 (30) PTC (Bombay) (paragraph 24).
ii) Stressing the argument that an interim injunction ought not be
to granted in the face of lack of commercial use of the patented product,
the judgment in V. Manioka Thevar Vs. Star Plough Works, AIR 1965
Madras 327 has been referred, the relevant portion whereof is
reproduced hereinbelow :
"5. ... An interim injunction will not be granted if the
patent which has been obtained by the plaintiff is a recent
one and there is a serious controversy about the validity of
the grant of the patent itself. In other words, if from the
objections raised by the defendant it is clear that that a
serious controversy exists as to whether or not the invention
claimed by the plaintiff is a new one or a new manufacture
of whether or not the invention involves any new inventive
skill having regard to what was known or used prior to the
date of the patent, courts will not grant an interim injunction
restraining the defendant from pursuing his normal business
activity. An interim injunction will not be granted if the
defendant disputes the validity of the grant. The facts of the
instant case disclose a bona fide tribal issue as regards the
inventive genius claimed by the plaintiff. If the patent is
new and its validity has not been established in a judicial
proceeding till then, and if it is endeavoured to be shown
that he patent ought not to have been granted under the
provisions of S. 26 of the Patents and Designs Act, 1911,
the court will not interfere by issuing a temporary
injunction."
The argument as regards non-grant of interim injunction in a
case where the validity of the patent - especially a „new‟ patent not in
use commercially - is assailed and the same has also been stressed and
reiterated in Bilcare Ltd. Vs. Amartara Pvt. Ltd., 2007 (34) PTC 419
(Delhi) in paragraph 81 thereof.
iii) While referring to the finding in M/s. Biswanath Prasad
Radhey Shyam (supra) that "a mere collection of more than one integers
of rthings, not involving the exercise of any inventive faculty, does not
qualify for the grant of patent", the observation of the Court in Dhanpat
Seth & Ors. Vs. Nil Kamal Plastic Crates Ltd., 2008 (36) PTC 123 (HP)
(DB) was as under :
"17. The device being manufactured by the plaintiffs is
basically a Kilta but made out of synthetic polymeric
material which is commonly known as plastic. The process
of making traditional items out of such polymers is a well
known and well established process. This Court can take
judicial notice of the fact that much prior to the device being
manufactured by the plaintiffs, traditional items made out of
woods, steel, brass, leather and other natural materials have
been replaced by plastic. In this regard reference may be
made to chairs, tables, Jugs, baskets, shoes and numerous
other items which were traditionally made of natural
material but are now made of plastic. Therefore, in our
opinion, the mere fact that the device is made of polymeric
material instead of bamboo is not an inventive step
involving any novelty. There is nothing new about the
process of manufacturing the traditional Kilta made of
natural material from synthetic material. Even nylon straps
now added are virtually copies of the ropes used in the
traditional Kilta. The ropes in the Kilta can also be adjusted
by the user keeping in view the height of the person using
the Kilta and the weight being carried by him. The mere
introduction of buckles would not amount to a new device
being called an invention or an inventive step."
iv) J. Mitra & Co. Pvt. Ltd. Vs. Kesar Medicaments & Anr.,
2008 (36) PTC 568 Delhi, paragraph 51 of which is a composite finding
as regards validity of a patent as well as actual user of the patent and is
reproduced hereunder :
"51. Although the examiner looks into various aspects and
makes a rigorous examination of the patent application and
opposition thereto, in view of the decisions in Bishwanath
Prasad Radhey Shyam and Standipack Private Ltd cases
(supra), the order of the patent controller granting the patent
and the decision on the opposition cannot of itself give rise
to a presumption of validity of the patent notwithstanding
the investigation and examination made and the same can be
challenged. Insofar as the decision in M/s National
Research Development Corporation of India case (supra)
is concerned while the actual user and duration of the patent
may be one of the factors that may be taken into account, I
am of the view that that factor alone cannot give rise to a
presumption of validity of the patent. This Court would thus
have to look into the merits of the case of the plaintiff as
also the defense put forth by the defendant."
40. In support of the defences raised in the written statement
and the grounds raised in the counter claim of revocation of impugned
patent and documents placed on record, Mr. Arun Jaitley, learned
Senior Counsel has also referred para 8-75 at Page 130 of Terrell on
the Law of Patents, Sixteen Edition which reads as under :
"Infringement not novel" (Gillette defence)
8-75 Since no relief could be obtained in respect of an invalid
patent, if the defendant could prove that the act complained of
was merely what was disclosed in a publication which could be
relied on against the validity of the patent, without any
substantial or patentable variation having been made, he had a
good defence. This is the so-called "Gillette defence" arising out
of the words of Lord Moulton in Gillette Safety Razor Co. Vs.
Anglo-American Trading Co. where he said :
"I am of opinion that in this case the defendant‟s right to
succeed can be established without an examination of the
terms of the specification of the plaintiff‟s letter patent. I
am aware that such a mode of deciding a patent case is
unusual, but from the point of view of the public it is
import that this method of viewing their rights should not
be overlooked. In practical life it is often the only
safeguard to the manufacturer. It is impossible for an
ordinary member of the public to keep watch on all the
numerous patents which are taken out and to ascertain the
validity and scope of their claims. But he is entitled to feel
secure if he knows that that which he is doing differs from
that which has been done of old only in non-patentable
variations such as the substitution of mechanical
equivalents or changes of material, shape or size. The
defence that „the alleged infringement was not novel at the
date of the plaintiff‟s letters patent‟, is a good defence in
law, and it would sometimes could and would put forth his
case in this form, and thus spare himself the trouble of
demonstration on which horn of the well-known dilemma
the plaintiff had impaled himself, invalidity or non-
infringement."
41. Mr. Sudhir Chandra, learned Senior counsel for the plaintiff
in rejoinder argument has countered the submissions of the defendants
in relation to evidence referred to prior art by the defendants.
42. He has referred the pleading, documents and written-note
submitted during the hearing of the interim application and contended
that :
i) Franz did not teach use of palladium for corrosion resistance.
In fact, Franz is almost silent on corrosion resistance. In particular,
Franz teaches only with regard to transparent articles and does not
teach anything about any reflective articles such as mirrors
whereas the plaintiff‟s patent claims a glass/silver/paint mirror
with no copper layer.
Franz has no paint layer whereas plaintiff mirror has a paint layer.
Franz relates to metal layers of copper, nickel, cobalt and iron
whereas plaintiff patent relates to a silver layer.
Franz is concerned with deposition of a uniform thin transparent
layer without the defect of pinholes and streaks whereas the
plaintiff‟s patent‟s technical know how improves corrosion
resistance of a glass/silver/paint mirror with no copper layer.
Franz used palladium chloride not for increasing the corrosion
resistance, nor for adhesion but for uniform application of a thin
transparent metal layer.
ii) It is also contended that the difference between the prior art
cited by the defendant i.e. Buckwalter and the plaintiff‟s invention are -
Buckwalter‟s invention is a glass/silver/paint mirror with Copper
layer whereas plaintiff‟s invention is a glass/silver/paint mirror
with no copper layer.
Buckwalter teaches how to treat the glass surface with lanthanide
rare earth iron and does not teach how to manufacture a mirror
without copper layer having adequate corrosion resistance.
iii) It is submitted that the difference between the prior art cited
by the defendant i.e. Orban and the plaintiff‟s invention are -
Orban teaches how to deposit copper on a fiberglass filament and
does not teach how to manufacture a glass/silver/paint mirror
with no copper layer.
iv) The difference between the prior art cited by the defendant
i.e. Greenberg and the plaintiff‟s invention are -
Greenberg teaches how to manufacture transparent articles by
depositing nickle on a transparent substrate and does not teach
how to manufacture a glass/silver/paint mirror with no copper
layer.
v) The difference between the prior art cited by the defendant
i.e. Shipley and the plaintiff‟s invention are -
Shipley teaches how to deposit a conductive layer of copper on a
printed circuit board. He does not teach how to manufacture a
glass/silver/paint mirror with no copper layer.
vi) According to the plaintiff the difference between the prior
art cited by the defendants i.e. Research paper by Minjer & Book and the
plaintiff‟s invention are -
Minjer & Boom relates to nickel plating and discusses possible
reaction mechanisms at a glass surface during electroless
plating. It does not teach how to manufacture a glass/silver/paint
mirror with no copper layer.
vii) Bergstorm & Franz were both dealing with glass with
transparent metal film for use in architecture. Both used palladium.
Franz refined the use of palladium by buffering method and controlling
the pH content. Franz used palladium for uniformity of application of
thin metal film. Neither Bergstorm nor Franz were concerned with
manufacture of a mirror. Neither Bergstorm nor Franz deals with
copper layer of a mirror and reading of neither teaches that the copper
layer could be removed in a conventional mirror by the use of
palladium. In fact 10 years later, even Buckwalter, who had access to
Franz and Bergstorm, could not figure this out despite being concerned
with a glass/silver/paint mirror.
Discussions on Patent in question
43. I shall now discuss the patent in question, its claims and the
challenges to it as made by the defendants. The Indian Patent no.
190380 consists of the following claims in which the novelty is claimed
by the plaintiff:
"1) A Mirror with no copper layer comprising:
v) a vitreous substance,
vi) 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,
vii) 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
viii) at least one paint layer covering said silver coating
layer.
44. The plaintiff stated as mentioned above that the aforesaid
claims are novel and inventive in the sense that the said process of
manufacturing the mirrors as stated in the aforementioned claims
involves a mirror with no copper layer and its treatment in the following
steps :
i) sensitising a surface of a glass substrate by bringing it into
contact with a sensitizing solution and activating the
surface in an activating step, in which the surface is brought
into contact with an activating solution, whereby the
activating solution contains ions of at least one of the metals
of bismuth (III), chromium (II), gold (III), indium (III),
nickel (II), palladium (II), platinum (II), rhodium (III),
ruthenium (III), titanium (III), vanadium (III) and zinc (II).
ii) a silvering step, in which said surface is brought into
contact with a silvering solution and optionally
compromising contacting the silver coating layer with a
solution containing ions of at least one of the group
consisting of Cr(II), V(II or III), Ti(II or III), Fe(II), In(I or
II), Sn (II), Cu(I) and A1(III) and/or contacting the silver
coating layer with a silane; and
iii) a step for covering the resulting silver layer with one or
more protective paint layers.
45. The first step has been further sub categorized by the plaintiff
in to two steps namely „sensitization‟ and „activation‟.
46. The invention improves the corrosion resistance power of the
mirror as against the ordinary mirror where the silver which is adhered
to the mirror surface is prone to corrosion and damage. In short, the said
invention improves the life and durability of the mirror.
47. The defendants have launched manifold attacks on the
impugned patent by citing the prior arts which are analysed as under:
"Buckwalter (Patent no. 4285992 granted on August, 25 1981)
- The title of invention states " process for preparing
improved silvered Glass Mirrors"- The Abstract of invention
reads " Glass mirrors having improved weathering properties
are prepared by an improvement in the process for making
the mirrors. The glass surface after it has been cleaned but before
it is silvered, is contacted with a solution of lanthanide rare earths
in addition to a sensitization solution of tin or palladium. The
addition of rare earths produces a mirror which has increased
resistance to delamination of the silver from the glass surface in
the presence of the water."
48. From the bare reading of this prior art, the similarities in the
process of the Indian patent with that of prior art can be gathered which
can be summarized as :
a) That the process of activation before silvering is not novel atleast
on the date of application of the patent which is 1995.
b) The treatment of the glass surface with a tin or palladium is also
not novel on the date of application.
c) That the prior art which is cited also talks identical advantage
resulting with the treatment of glass surface with activation
solution and the said advantage is resistance to the delamination of
the silver ; in other words the corrosion resistance and
improvisation in adhesion of silver which is primary aim and
usefulness claimed in the said invention.
In Buckwalter (Supra), the claims which are close to the Indian
patent are:
„1. In the method for preparing silvered mirrors of glass, wherein
one surface of the glass is scrubbed with a slurry of an abrasive to
clean the surface, a solution of a soluble compound of tin or
palladium is applied to the cleaned surface to sensitize the glass,
and the sensitized surface is contacted simultaneously with a
solution of a soluble silver compound and one or more solutions
of caustic and reducer which together with the silver solution
react to precipitate a layer of silver on the sensitized surface of
the glass, a layer of copper is applied over the layer of silver, and
a layer of paint is applied over the layer of copper, the
improvement which comprises applying a solution of a soluble
compound of lanthanide rare earth ions to the cleaned surface of
the glass before the silver is precipitated on the sensitized surface
whereby the layer of silver has increased resistance to
delamination from the surface of the glass in the presence of
moisture.
2. The process of claim 1 wherein the cleaned glass surface is
contacted with the solution of rare earth ion before the surface is
sensitized, the solution being acidic and containing from 0.01 to
1.0 weight percent rare earths.
3. The process of claim 2 wherein the rare earths are selected
from the group consisting of neodymium, praseodymium, erbium,
lanthanum, samarium, and dysprosium.
4. The process of claim 1 wherein the cleaned glass surface is
contacted with the solution of rare earth after the surface has been
sensitized, the solution being acidic and containing from about
0.01 to 1.0 weight percent of rare earths.
5. The process of claim 4 wherein the rare earths are selected
from the group consisting of neodymium, praseodymium, erbium,
lanthanum, samarium, and dysprosium.
6. The process of claim 5 wherein the sensitizing solution also
contains from 0.01 to 1.0 weight percent rare earths whereby the
cleaned glass surface is contacted simultaneously with the tin or
palladium and the rare earths.
7. The process of claim 6 wherein the rare earths are selected
from the group consisting of neodymium, praseodymium, erbium,
lanthanum, samarium, and dysprosium.‟
49. By citing the aforementioned claims in Buckwalter, the
defendants intended to show to this court that the base of the plaintiff‟s
invention as regards the treatment of the glass surface with sensiting
solution, thereafter with activating solution comprising palladium or tin
is not novel and it has been taught in the Buckwalter patent. The
plaintiff however, disputes this prior art stating that the same does not
relates to the mirror without copper layer and rather it relates to mirror
with copper layer.
50. The defendants in second prior art referred the Franz patent.
The same is analysed as under:
"Franz (patent no. 3798050 granted on March 19, 1974) - The
title of the invention reads " Catalytic Sensitization of
Substrates for Metallization" - The Abstract of the invention
reads : " Metal films of improved uniformity are formed on
substrates having their surfaces sensitized by the deposition of
palladium or tin by buffering the palladium salt solution in
contact with the glass at PH from 6 to 9. Buffering is
preferably accomplished by contacting the substrate with an
aqueous bufferng solution and acidic palladium salt solution" -
The Background of the invention reads " This invention relates to
chemical plating reffered to in the art of electroless plating, and
more particularly relates to the new method of sentisitizing a
substrate surface to produce a catalytic surface receptive to the
deposition of metal born containing film.
The claims of this invention are not reproduced herein as the
defendant has cited this as a prior art to denote that the process of
sensitization of substrate is not new to the industry and the use of
the palladium or tin as a activating agent and consequently leading
improvised adhesion is discovered way back in 1971 when this
patent was filed in US.
The plaintiff lodged its protest in reply that the Franz (supra) does
not in stricto senso relates to glass mirrors and it essentially relates
to glass films and thus the same should not operate as a prior art to
anticipate the subject patent. It is further urged by the learned
senior counsel for the plaintiff that Franz patent does not talk
about paint layer and palladium chloride is not used for increasing
corrosion resistance etc."
51. ORBAN (US - 4643918 filed on May 3, 1985) - The title
of the invention reads " Continuous process for the metal coating of
fiberglass". The abstract of the same reads as under :
"The preparation of fiberglass filaments for subsequent
coating with metal wherein the fiberglass filaments first are
immersed in a wetter solution containing alcohol, a detergent,
and an ethylene oxide and propylene oxide copolymer
surfactant. Following this treatment the filaments may be
treated with conventional palladium chloride or tin chloride
activators, followed by treatment with an acid accelerator and
then autocatalytically coated with metals such as copper, gold,
palladium, cobalt, nickel, and nickel alloys of phosphorus,
boron, or tungsten. A second electroplating or immersion
plating step may be included where the metal-coated filaments
are electroplated or immersion plated with either the same
metal, or a different metal taken from the group consisting of
nickel, silver, zinc, cadmium, platinum, iron, cobalt, chromium,
tin, lead, rhodium, ruthenium, or iridium. The filaments are rinsed
with water following immersion in the wetter solution and after
each plating step and then finally are rinsed with alcohol and
dried."
The relevant claims are as under :
"1. A method of continuously coating fiberglass filaments with
metal comprising the steps of :
Immersing said filaments in a wetter solution containing alcohol,
a detergent and an ethylene oxide and propylene oxide copolymer
surfactant,
rinsing said filaments with water,
treating said filaments with an activator selected from the group
consisting of palladium chloride and tin chloride,
treating said filaments with an acid accelerator,
coating said filaments with a metal selected from the group
consisting of copper, gold, palladium, cobalt, nickel, and nickel
alloys of phosphorus, boron, or tungsten,
rinsing said filaments with alcohol,
drying said filaments.
2. The method of claim 1 wherein, immediately prior to rinsing
said filaments with alcohol, said metal coated filaments are
coated with a second metal, which metal is the same as the metal
first used to coat said filaments, then rinsing said thus coated
filament with water.
3. The method of claim 2 wherein said filaments are coated by
a process selected from the group consisting of autocatalytic
coating, electroplating, and immersion plating.
4. The method of claim 1 wherein said alcohol is isopropyl
alcohol.
5. The method of claim 1 wherein the filaments are coated by a
process selected from the group consisting of autocatalytic
coating, electroplating, and immersion plating.
6. A method of continuously coating fiberglass filaments with
metal comprising the steps of :
immersing said filaments in a wetter solution containing alcohol,
a detergent and an ethylene oxide and propylene oxide
copolymer surfactant,
rinsing said filaments with water,
treating said filaments with an activator selected from the group
consisting of palladium chloride and tin chloride,
treating said filaments with an acid accelerator,
coating said filaments with a metal taken from the group
consisting of copper, gold, palladium, cobalt, nickel and nickel
alloys of phosphorous, boron, and tungsten,
rinsing said filaments with water,
coating said metal coated filaments with a metal selected from the
group consisting of nickel, silver, zinc, cadmium, platinum, iron,
cobalt, chromium, tin, lead, rhodium, ruthenium and iridium,
rinsing said filaments with water,
rinsing said filaments with alcohol,
drying said filaments.
7. The method of claim 6 wherein said filaments are coated by a
process selected from the group consisting of autocatalytic
coating, electroplating, and immersion plating."
52. The defendants cited it as a prior art to single out that the
process involved is taught in the said patent ORBAN (supra). Further,
the defendants also pointed out that the said patent also talks about the
selection of the activator and palladium and tin elements. Lastly, the said
patent also gives a choice of selection of copper, gold, palladium and
many others for metalling/ treatment. Hence, the plaintiff‟s choice of
palladium as against copper can easily be said to be the workshop result
by picking, choosing and experimenting in the workshop.
53. The Plaintiff sought to distinguish the said patent by stating
that the said patent teaches how to deposit copper on a fiber glass
filament and it does not teache how to manufacture glass/silver paint
mirror with no copper layer.
54. GREENBERG (US Patent no.3978271 filed on April 15th
1975 and granted on August 31, 1976) - The said patent is again
essentially relied upon as a prior to demonstrate that the treatment of the
glass articles/ transparent articles with the solution containing the ions of
the metals lead to electroless plating. The abstract of the said prior art
reads "Films containing metallic silver and nickel are deposited on
transparent articles according to the present invention. A nickel coated
glass article having a reflective gray appearance is contacted with a
solution comprising water, a silver salt and a complexing agent. The
resultant article has a low reflectance surface and the color of which
appears brown - gray floroscent lighting." The said prior art is relied
upon by the defendants to the limited extent as explained above and thus
it does not necessitate the claim analysis.
55. The plaintiff again raised similar objections stating that the
Greenberg teaches how to manufacture transparent articles by depositing
nickel on a transparent substrate and does not talk about the
manufacturing of mirror with no copper layer.
56. SHIPLEY (Great Britain PATENT No. GB929799
granted on May 23rd, 1960) - The said invention is relied
upon as a prior art by the defendants to apprise this court of
the fact that the process of electroless metal deposition and its
related process have been researched way back since 1959
and thus, the same is known to the person skilled in the art.
The title of the invention reads " Improvements in or relating to
Electroless Metal Deposition". The claims are not reproduced herein as
the same is relied upon to strengthen the argument of obviousness.
57. In addition to the above, the defendants have relied upon
the publication titled as "The Nucleation with SnC12-Pd12 Solutions
of Glass Before Electroless plating by C.H. de Minjer and
P.F.j.v.d. Boom published in December 1973 and while citing the
same, the defendants contended that the main ingredient of the
plaintiff‟s invention regarding the treatment of the mirror with tin as
well as that of palladium fails as the same was a known technology at
the time of the publication and also on the date of application of the
patent.
58. While citing all these prior arts, the defendants intended to
attack the Indian patent as a mere workshop result as by studying these
patents as mentioned above granted in US, the present alleged invention
becomes a mere discovery and usefulness of the same is also withered
away.
59. The defendants have also relied upon one judgment of
Federal patent court of Germany wherein vide detailed order, the appeal
filed by the same plaintiff against the rejection of the claims which were
similar to that of the Indian patent was rejected. The defendants have
stated that the said judgment has attained finality. The defendants
essentially relied upon the claims 1, 3 and 11 in question of that
judgment which are reproduced hereinafter:
"1. Process for preparing a mirror without copper layer,
comprising a sensitizing step, wherein said surface of a
glass substrate is contacted with a sensitizing solution, an
activating step, wherein said surface is contacted with an
activating solution, the activating solution containing an
ion of at least one of the metals bismuth (III), Chromium
(II), gold (III), indium (III), nickel (II), palladium (II),
platinum (II), rhodium (III), ruthenium (III), titanium (III),
vanadium (III) and zinc (II), a subsequent silvering step,
wherein said surface is contacted with a silvering solution,
and a step of covering the resulting silver layer with one or
more protective layers of paint.
3. Process according to Claim 1 or 2, wherein the sensitizing
step is carried out prior to the activating step.
11. Process according to any one of the preceding claims,
wherein, prior to covering the resulting silver layer with one
or more protective layers of paint, the silver layer is
contacted with a solution comprising ions of at least one of
the metals of the groups Cr(II), V(II or III), Ti(II or III),
Fe(II), In(I or II), Sn(II), Cu(I) and AI(III)."
60. The said claim which closely resembles the Indian patent
has been rejected on the count of the lack of novelty and inventive step
and the finding of the German federal court is recorded and the same is
reproduced as under :
"3. The process according to Claims 1, 3 and 11 of the
Main Request and the 1st Auxiliary Request, according to
Claims 1, and 3 of the 2nd Auxiliary Request and according
to Claim 1 of the 3rd Auxiliary Request is rendered obvious
by the prior art.
A process for preparing a mirror without copper
layer, comprising a sensitizing step, wherein the
surface of a glass substrate is contacted with a
sensitizing solution, a silvering step, wherein said
surface is contacted with a silvering solution, and a
step of covering the resulting silver layer with one
or more protective layers of paint, wherein, prior to
covering the resulting silver layer with one or more
protective layers of paint, the silver layer is contacted
with a solution comprising the ions of Sn(II)
is known from the teaching of Published Application (8) of
the Applicant (Claims 14, 16, 17 and 21 of combination
with p. 3, 1.29 to 32 and Examples 1 to 4 and 8 to 13),
which is considered closest prior art. The process is
according to the above mentioned claims (1, 3 and 11
according to the Main Request and the 1st Auxiliary
Request, 1 and 3 according to the 2nd Auxiliary Request and
Claim 1according to the 3rd Auxiliary Request) differs from
the above process only in that it comprises an activating
step, wherein said surface is contacted with an activating
solution comprising at least one of the ions bismuth (III),
chromium (II), gold (III), indium (III), nickel (II), palladium
(II), platinum (II), rhodium (III), ruthenium (III), titanium
(III), vanadium (III) or zinc (II) after the sensitizing step.
The fact that passivation with an Sn (II)-ions containing
solution, which is obligatory according to (8), is not
described as obligatory in the main claims according to the
Main Request and the 1st Auxiliary Request, is not
recognized as a further difference in view of the teaching
according to (8) by the Board. The formulation of these
main claims according to the Main Request and the 1 st
Auxiliary Request does in fact not exclude such passivation
treatment, but actually even comprises such treatment -
according to the respective Claims 11 - as preferred
embodiment. However, if this possibility is made use of
according to the application - as is the case in the majority
of the examples - the passivation treatment does not
constitute a difference in view of the prior art according
(8).
The measure of activating after sensitizing, which is the
only remaining difference compared to (8), cannot
substantiate inventive step of the process according to the
application.
....Moreover, in the relevant literature concerning mirror
manufacture, it has already been described that activation
leading to the improvement of adhesion of silver to the
glass substrate leads to an improvement of resistance to
moisture and weathering, i.e. properties which can be
summarized by the term of resistance to corrosion (cf. (5),
column 3, line 3 to 20).
4. As a result of all this, Claims 1, 3 and 11
according to the Main Request and the 1st Auxiliary
Request, Claims 1 and 3 according to the 2nd Auxiliary
Request and Claim 1 according to the 3rd Auxiliary Request
cannot be granted due to lack of inventive step. All of the
other claims underlying the requests of Applicant must be
rejected together with the mentioned claims."
61. On being questioned with respect to the same, the learned
Senior counsel for the plaintiff clarified that the judgment has been
given according to German Law and the same should not influence this
court while deciding the present controversy.
62. I have read and understood the assertions of the defendants
relating to the challenge made by them against the plaintiff‟s patent.
Learned Senior counsel for the plaintiff has sought to distinguish the
prior arts on one count or the other by stating that they do not teach the
manufacture of a mirror without copper layer. At this stage, I would
like to state that the test is to examine whether the patent is vulnerable
to challenge and whether the said patented subject matter can be
attributed as a mere workshop result by mixing or working upon it or
experimenting upon the same. The test is not that whether the said
invention can be exactly arrived at by way of the prior art. The
distinctions sought to be made by the plaintiff, if it all have any merit
shall be tested at the time of trial. At this stage, taking the prima facie
view of the matter, it can be stated that the suit patent is vulnerable to
challenge.
63. The claim of the impugned patent granted in India and
challenge made by the defendants to that of the plaintiff‟s patent. Before
proceeding with my discussion, it would be appropriate to discuss the
parameters in which the examination of the patents are required to be
done at the interlocutory stage which has been extensively discussed by
this court and other courts time and again.
64. There is no res integra to the question that the grounds of
challenge of the patent which are available to the defendant in revocation
of the patent are also available to the defendant by way of challenging
the validity of the same in an infringement suit. The same exposition of
law has been discussed in Bishwanath Prasad Radhey Shyam‟s case
(supra) which has been the authority on the point and also discusses in
detail the tests of patentability.
65. There are other authorities which reiterate the said exposition
of law from time to time and discuss the grant of injunction at the
interlocutory stage, however, the recent one which encapsulates the law
on the subject and lays down the parameters within which this court has
to scrutinize the patents and the challenge thereto is decided by a
Division Bench of this Court in F. Hoffmann- La Roche Ltd Vs. Cipla
Ltd; 159(2009)DLT243 wherein the division bench while dealing with a
similar issue of the grant of injunction laid down the extent of
examination by the court for the grant of injunction which is stated as
under :
" Notwithstanding the above, assuming that the plaintiff
held a valid patent for the product which has been subject
matter of the suit for infringement, the grant of such patent
to the plaintiffs will not ipso facto entitle them to an interim
injunction if the defendant is able to satisfy the court that
there is question to be tried as to the validity of the patent.
In the present case, the defendant has raised a credible
challenge to the validity of the patent by raising the serious
triable and substantial question that renders it vulnerable to
challenge."
66. Thus, this court has to examine the challenge made to the
patent as to whether there is any serious, triable dispute which is made
out and the same renders the patent vulnerable to challenge or not.
67. The another thing which requires discussion at this juncture is
that novelty, inventive step and industrial application are the three
trinity tests of patentability and the same are to be satisfied
independently of each other although it is separate issue that they may be
interdependent upon each other as novelty promotes invention which
enhances its applicability in the industry. Thus, the challenge which in
the present case is raised has to be looked into from the perspective of
novelty or newness as well as inventive step or obviousness wherein the
criterion is that the same invention cannot be known to the person skilled
in the art.
Discussion on submissions by the parties
68. Now, I shall proceed to examine the submissions of the rival
parties on these principles in order to decide the application for ad
interim injunction.
69. While looking into the invention of the plaintiff, it can be
stated that the same is related to a mirror without a copper layer with the
processes including sensitization, activation, silvering and layering. The
said process and product uses essential ingredients including treatment
with tin and/ or palladium chloride. The plaintiff asserts that the same is
novel process although the steps for manufacturing the said mirror may
be known and the specification of Indian patent itself mentions about the
same.
70. However, the defendants have cited several prior arts which
relates to similar processes as mentioned above which, prima facie in the
opinion of this court, show that the patent of the plaintiff is vulnerable to
challenge. This is due to the reason that the prior arts talk about the
researches which have been carried out for decades in the area of
improvisation of adhesion of metals on glass and also talks about the
processes including the sensitizing, activating process with a treatment
of the subject with the activating solution and also with palladium and
tin. Furthermore, there are claims and corresponding industrial
application which show that the Indian patent and that of the arts cited
are quite close.
71. The challenge to the patent made by the defendants is not
unfounded and rather it raises a serious credible challenge to the patent
and the same is discernible from the fact that the German Federal court
rejected the claims closest to those of the Indian patent on the grounds
of lack of novelty and inventive step. Incidentally, the German court
while rejecting the claims of the patent of the present plaintiff relied
upon the same prior arts which have been relied upon by the defendants
in the present proceeding. Thus, as a matter of proprietary and also
international comity which warrants that the judicial decision of the
foreign tribunal/court may be respected in the same manner as that of the
national court, this court is not inclined to take a different view atleast at
an interlocutory stage.
72. The submission of the learned senior counsel for the plaintiff
that the German court decision may not be considered as the same is
based upon German law is devoid of any merit. This is so due to the
reason that after India has signed WTO, the member countries have been
made TRIPS compliant. The law relating to patent although territorial in
nature operates on the three tests of patentability namely, novelty,
inventive step and industrial application and the same are to be satisfied
for the purposes of examining the patentability of the subject matter. The
tests for patentability are same worldwide and the same is also clear after
reading the decision of German Federal court.
73. The learned Senior Counsel for the plaintiff strenuously
argued that assuming that the prior arts cited by the defendants are
correct, the obviousness has to be looked into by the court from the
perspective of an unimaginative person normally skilled in the art on the
date of the plaintiff‟s patent. There is no dispute to the submission which
has been made by Learned Senior counsel but when the present prior arts
are looked into and examined from the standpoint of an unimaginative
person normally skilled in the art, it raises a doubt as to how the said
person will not learn as to how to arrive at the said patent after knowing
about the technology in question.
74. It is noteworthy that the Supreme Court in Bishwanath Prasad
( Supra) has laid down that the obviousness has to be gauged from the
perspective of a person skilled in art. The nomenclature of the said
person howsoever embellished it may be is not relevant for the purpose
of determining the same. The substratum of it will remain the same
which is that whether the alleged prior arts teach as to how to arrive at
the invention in question or whether it makes the invention a mere
workshop result. If the answer of the same is in affirmative, then the
same may attract obviousness. Thus, the submission of the learned
Senior Counsel is meritorious but the same if applied to the present case
satisfies the said criterion of obviousness.
75. The submission of learned senior counsel for the plaintiff on
Mosaicing which means that the defendants for the sake of undermining
the patent are seeking the aid of too many prior arts and making a
mosaic of the prior arts, the submission of the plaintiff has been disputed
by the learned senior counsel for the defendants by stating that the
challenge to the Indian patent is not raised merely on the count of
novelty but also on the count of inventive step.
76. The observation of Lord Reed in the case of Technograph vs.
Mills & Rockley‟s case (supra) has been cited to show that mosacing is
permissible in order to find the element of obviousness. To this, I would
say that I have already discussed the aspect relating to the novelty and
inventive step which are the two independent tests of patentability. The
inventive step of course has to be tested on the basis of the techniques
and technologies which are existing and preexisting to the date of the
patent and to find the same as to whether the same is obvious to the
inventor of the patent.
77. That being the position, there would be no harm in relying
upon the prior arts so far as it makes sense to show that by studying
these prior arts, the inventor‟s job is reduced to sitting in the workshop.
Thus, this court holds that mosaicing may not be relevant to undermine
novelty in the circumstances of the case but obviousness has to be seen
while looking into the techniques and technologies of existing and
preexisting state of art.
Discussions on prima facie case and balance of convenience
78. At this interlocutory stage, this court refrains from
commenting as to whether the patent is bad or not. Suffice to say that a
consideration of the prior arts cited by the defendants and bare perusal of
the Judgment of the German Federal court, it can be said that a
substantial, tenable and credible challenge is made out which is required
to be tested at the time of trial and thus, at this stage, the grant of interim
injunction is not warranted.
79. Furthermore, it is the contention of the learned senior counsel
Shri Jaitley that the technology and the steps involved in the process of
manufacturing defendants‟ mirror is not the same as that of the plaintiff.
The plaintiff has based its claim while examining the defendants‟ mirror
at its own laboratory in Belgium. The affidavit of one Dr. Pierre
Boulangar is filed to substantiate the ingredients of the defendants‟
invention and to state that the same corresponds to the Patented mirror of
the plaintiff.
80. On the other hand, the defendants dispute the same and state
that the defendants are using the process which is based on Franz Patent
(Supra) and the same is different from that of the plaintiff. It is further
contended and pointed out that plaintiff itself has distinguished Franz
(Supra) before USPTO to wriggle out itself from the prior arts cited by
the US examiner. The said process were distinguished by the plaintiff
itself in the reply to the office actions given by the US patent examiner.
Thus, according to the defendants, the defendants are using the process
based on the Franz patent which involve the following steps:
"This invention relates to chemical plating referred to in
the art as electroless plating, and more particularly, it relates
to a new method of sensitizing a substrate surface to
produce a catalytic surface receptive to the deposition of
metal-boron containing film.
In the art of metalizing substrate, particularly non-
conductive materials such as non-metals, for example
glass and plastics, it has been found desirable to prepare the
substrate surface to make it more receptive to metal
deposition."
81. The said fact again raises a disputed question of fact which
requires evidence and raises a prima facie doubt on the fact as to whether
the defendants are using the same process which corresponds to that of
the plaintiff patent. At the interlocutory stage, this court has to form a
just and a prima facie opinion and the disputed questions which have
been asserted by the plaintiff and denied by the defendants and the
veracity of which is in question requires a trial. Thus, the same is another
reason for the non grant of interim injunction as question of infringement
or no infringement in the present is disputed question of the fact.
82. The plaintiff on other hand in order to show that there is
working of the patent in India has filed form- 27 declaring before the
patent office that the said invention is exploited in India filed by the
attorney of the plaintiff. Furthermore, the affidavit of Georges Pilloy is
also filed to depose the same.
83. The test which has to be applied is whether there is an actual
commercial working/ exploitation of Invention in India. Thus, the
plaintiff when it files merely forms and an affidavit to depose the
working is not able to qualify on the count of commercial working of the
invention. The test of commercial working is of course very difficult to
define but at the same time giving meaningful reading would mean that
the product or invention must be put to commerce, it must have sales
arising out of the exploitation of the same. The commercial working may
not be present in vacuum. The forms filed by the plaintiff do not clearly
reveal commercial sales arising out of the sale of the plaintiff‟s
inventions in India. Copies of the licenses if any as alleged by the
plaintiff have not been produced.
84. In a way, no cogent evidence for commercial working is
placed on record except the averments in various pleadings. The patent
which has been granted in the year 2004 is merely stated in the affidavit
to be used in India since the year 2007 in the said affidavit of Mr. Pilloy
which is dated 17th March 2009. It again does not depose about the
commercial working of the said invention in India on continuous and
consistent basis from the year 2007. It is again questionable that to
what extent can import of goods be considered actual commercial
working of the inventions. The said facts again require to be tested at
trial and are disputed questions. It is difficult to comment upon the
commercial working of the patent in India based upon the existing
documents.
Principles for grant of Injunction
85. The principles for grant of injunction have been succinctly
discussed in American Cynamide Co.‟s case (supra) which have been
accepted and followed in the case of Franz Xaver Huemer Vs. New
Yash Engineers; AIR 1997 Delhi 79 wherein it was held in paras 28,
31 and 32 as under :
"28 It is true that earlier, in the well known case in
American Cyanamid Vs. Ethican (interlocutory) 1975 RPC
513 (at 541, 542), it was observed that it was sufficient if a
„triable issue‟ was there. According to Lord Diplock, the
Court must also be satisfied if there is a "serious question
to be tried" : therefore it should not try to assess relative
merits by looking into prima facie case in the affidavit
evidence but should instead turn at once to the balance of
convenience; if damages to be awarded at the trial can
adequately compensate plaintiff and the defendant could
pay them, injunction could be refused; if not, injunction
could be refused; if not, injunction could be granted; if
defendant could be compensated by way of damages later
by plaintiff, injunction by way of damages later by
plaintiff, injunction could be granted; where there is doubt
about the adequacy of damages to one or both ; any factor
which may affect balance of convenience is to be
considered. If the balance is even, the relative strength of
the case is to be considered.
31. It is said that in the law of patents, it is not
sufficient merely to have registration of a patent. The
Court must look at the whole case, the strength of the case
of the patentee and the strength of the defence such as
those falling under Section 107 read with Section 64.
32. The need to establish prima facie has been
emphasized in recent cases in England and in India. The
Court has to consider whether there is prima facie proof of
infringement (Lord Denning M.R. & Megaw LJ Hubbard
Vs. Vosper, (1972)1 All ER 1023. Prima facie proof of
validity is different from prima facie proof of infringement
as stated by Sultan Singh, J. in NRDC Co. Vs. DCM Ltd.,
AIR 1980 Delhi 132. In that case, the learned Judge quoted
Terrel on the law of Patents (12th Ed. Para 830) : (at p 135
of AIR) :
"The plaintiff must first establish such facts as will
satisfy the Court that there are strong prima facie
reasons for acting on the supposition that the patent
is valid. The most cogent evidence for this purpose
is either that there has been a previous trial in which
the patent has been held to be valid, or that the
patentee has worked and enjoyed the patent for many
years without dispute or may be that as between the
parties the plaintiff is relieved from the onus of
establishing validity, as where the defendant has
admitted it or is so placed in his relationship to the
plaintiff as to be estopped from denying it."
86. In view of the above, it is clear that the said irreparable
injury has to be measured while looking into the corresponding injury to
the defendants if the injunction is granted.
FINDING
87. As I have already stated that the defendants have raised
substantial, tenable and credible challenge to the patent which raises a
triable dispute, therefore, the plaintiff has failed to make out a prima
facie case for the grant of ad interim injunction. Considerable doubt has
been raised by this court about the working of the patent in commercial
sense and on the other hand, the defendants are stated to be in the
business of manufacturing mirrors since the year 1993.
88. It is further asserted that the defendants belong to Guardian
International Corp which is the subsidiary of Guardian Industries Corp.
The defendants have stated that they own a Rs. 450 Crore plant in India
for the purposes of manufacturing mirrors. The defendants are stated to
be formed under the joint venture with Guardian Industries Corp which
is one of the world largest glass manufacturing company having 22 float
glass facilities located in North and South America, western, Central
Europe etc.
89. The defendants have stated to have done immense business
while effecting the sales of glasses and mirror at a commercial scale
since the year 1993 and without the copper layer since 2002. Thus, it
would be more inconvenient at this juncture to restrain the defendants
from manufacturing the mirrors given the fact that there is substantial
credible challenge raised to the patent, on the contrary, the plaintiff
would be less inconvenienced at this stage if the injunction is not
granted. The irreparable damage consequently will be caused to the
defendants if there is an injunction against them.
90. This court is also not unmindful of the fact that the patent was
filed on 8th May, 1995 and the same was granted on 12th March, 2004.
The term of the patent is limited to 20 years and thus, the delay in trial of
the suit may cause prejudice to the plaintiff. This court has also given
careful consideration to the recent dicta of Supreme Court in the case of
Bajaj Auto Limited Vs. TVS Motor Company Limited; 2009 (2)
CTMR 326 (SC) wherein the Supreme Court ruled that the patent and
trade mark matters may be put to trial and the same may be heard on day
to day basis in order to decide the suits itself instead of injunction
applications.
91. Given the present situation and the nature of matter wherein
the delay in litigation may defeat the rights of the plaintiff, this court is
of the opinion that this court may give the liberty to the parties to seek
appropriate directions for appointment of local commissioner for
expediting the trial in the matter.
CONCLUSION
92. For the aforesaid reasons, the application filed by the
plaintiff being I.A. No.3756/2007 under Order XXXIX Rule 1 and 2
CPC is disposed of with the following directions :
(a) The suit proceedings shall be expedited;
(b) The defendants are directed to maintain the accounts and
file it on monthly basis in this Court in respect of the sales
arising without copper layer mirrors so that the plaintiff
may be adequately compensated in the event of failure of
the defendants in the trial; and
(c) The defendants shall file an undertaking by way of an
affidavit within two weeks from today that in case the suit
of the plaintiff is decreed after trial, the defendants shall pay
the profits and damages on their sale of impugned product
without copper layer to the plaintiff.
93. It is needless to say that the prima facie view taken by me in
the present case and any observations made herein shall be treated as
tentative in nature and shall not constitute any expression of final opinion
on the issues involved in the matter and shall have no bearing on the final
outcome of the case.
CS(OS) No.594/2007
94. List the matter before the Court for framing of issues and for
appropriate directions, if any, on 5th February, 2010.
MANMOHAN SINGH, J.
JANUARY 27, 2010
sa
