Glaverbel S.A. vs Dave Rose & Ors.
2011 Latest Caselaw 5298 Del

          IN THE HIGH COURT OF DELHI AT NEW DELHI

+ CS (OS) 594/2007

*
                                  Reserved on: 29th September, 2011

                                  Decided on: 2nd November, 2011

GLAVERBEL S.A.                                     .......PLAINTIFF

                         Through:    Mr. Sudhir Chandra, Sr.
                                     Advocate with Mr. Hemant
                                     Singh, Ms. Mamta Jha and
                                     Mr. Manish K. Mishra,
                                     Advocates
                         Vs.

DAVE ROSE & ORS.                                  .....DEFENDANTS

                         Through:    Mr. Rajeev K. Virmani, Sr.
                                     Advocate with Ms. Pratibha M.
                                     Singh, Ms. Bitika Sharma and
                                     Ms. Surbhi Popli, Advocates

Coram:
HON'BLE MR. JUSTICE A.K. PATHAK

       1. Whether the Reporters of local papers           No
          may be allowed to see the judgment?

       2. To be referred to Reporter or not?              No

       3. Whether the judgment should be                  No
          reported in the Digest?

A.K. PATHAK, J.

IA No. 12535/2011 (u/Sec. 151 CPC by Plaintiff)

1. By way of present application under Section 151 of the Code

of Civil Procedure, 1908 (CPC for short), plaintiff seeks following

three reliefs:-

"(i) Certified copy of order dated 10th September, 2009 passed by this Court in CS(OS) No. 593/2007 be taken on record;

(ii) Permit the claim so amended as claim in the present suit;

(iii) Plaintiff be permitted to place on record the certified copy of amended patent no. 190380 as and when received from the patent office."

2. Briefly stated facts of the case, relevant for the purpose of

disposal of the present application, are that the plaintiff has filed

this suit, inter alia, for permanent injunction to the effect that the

defendants be restrained from manufacturing, selling and offering

for sale copper free mirrors amounting to infringement of the

plaintiff‟s patent registered under registration No. 190380. It is

alleged that the plaintiff invented/developed and got patented

"Mirox New Generation Ecological Mirrors" (MNGE mirrors for short)

and launched the same in the month of September, 1998. In India

patent was granted vide Registration No. 190380 after thorough

examination by the experts in the Indian Patent Office. Mirror was

manufactured by using environment friendly process without using

copper or lead layer.

3. Claim No. 1, as contained in the registered patent of the

plaintiff, reads as under:-

"1) A Mirror with no copper layer comprising:

i) a vitreous substance,

ii) at least one material selected from the group consisting of bismuth, chromium, gold, indium, nickel, palladium, platinum, rhodium, ruthenium, titanium, vanadium and zinc at the surface of the said substrate,

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

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

4. The process of manufacturing the above referred product, as

mentioned in Claim No. 1, had also been patented and details of the

same have been provided in the registered patent, a certified copy

whereof has been placed on record along with the plaint. Relevant

claim nos. 9 and 10 in this regard reads as under :-

"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), 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 comprising 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 Al(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;

10. A process as claimed in Claim 9, wherein, in said sensitization step said surface is contacted with a sensitizing solution comprising tin (II) chloride."

5. Plaintiff had filed CS(OS) No. 593/2007, against one Shri

Anand Mahajan for permanent injunction praying therein that the

defendant be restrained from infringing the Indian Patent No.

190380 of the plaintiff as also for rendition of accounts. In the said

case, plaintiff also filed an application under Sections 57 and 58 of

the Patents Act read with Section 151 CPC being IA No.

13519/2007 seeking amendment in the Claim No. 1. By way of

amendment, plaintiff sought to insert "a sensitizing material,

typically tin, and" at the beginning of clause (ii) of Claim No. 1.

After the proposed amendment clause (ii) of Claim No. 1 reads as

under:-

"(ii) a sensitizing material, typically tin, and 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,"

6. A Single Judge of this Court vide order dated 10th September,

2009 reported in 2009 (41) PTC 207 (Del.) titled AGC Flat Glass

Europe SA vs. Anand Mahajan and Ors. disposed of said

application whereby allowed the aforementioned amendment. The

operative portion of the order reads as under:-

"25. In view of the aforementioned discussion and well settled position of law and bearing the facts of the present case in mind, I find that the present amendment is merely a clarificatory/elaborative one and does not alter the scope of the invention. At best, even if the defendants‟ objections are accepted, the said amendment appears to be a disclaimer which also cannot come in the way of permitting the amendment and in fact, the same rather support the amendment. The merits of the controversy as to whether it is disclaimer or clarification will be decided at a later stage. The amendment is thus allowed as being a clarificatory one and the same does not attract the proviso of Sections 58 and 59 of the Patent Act, 1970."

7. It is this order which is not only sought to be placed on

record in this case but amended claim no. 1 is sought to be read in

this case without amending the pleadings and the claim no. 1. It

may be noted here that the necessary correction in the patent has

yet not been carried out in the patent office, inasmuch as, the

certified copy of patent obtained from the patent office on 17th

March, 2010 contains unamended claim.

8. Learned senior counsel for the plaintiff has vehemently

contended that the amendment in claim no. 1, as allowed vide order

dated 10th September, 2009 passed in CS (OS) No. 593/2007, is

clarificatory in nature and does not alter the scope of invention.

Claim nos. 9 and 10 of the same patent specifically mention about

sensitization of the mirror by tin chloride. This fact was taken note

of by the Single Judge while allowing the amendment. Clerical

correction of claim no. 1 does not change the nature of the claim

no. 1. Besides this, order of amendment is "in rem" and has

attained finality and can be read in this case without amending the

pleadings of this case. Correctness or incorrectness of the order

dated 10th September, 2009 cannot be gone into in this case.

Amended claim no. 1, in terms of order dated 10th September, 2009,

can be read in all other proceedings without amending the

pleadings in other cases. Defendants have understood the claim no.

1 as a copper free mirrors in which first step is sensitization with

tin chloride. This is evident from the averments made in para nos.

17, 18 and 19 of the written statement. Defendants in their written

statement, have taken a plea that a patent claim "sensitization by

tin chloride" is not new, therefore, the patent is invalid. Defendants

have also cited prior art like "Franz", "Shipley", "Orban" and

"Buckwalter" in para 18 of the written statement and have stated

that "sensitization by tin chloride" is an old concept. Thus, no

formal amendment of pleading in respect of claim No.1 is required

in this case. Defendants are not prejudiced in this case even if

amended claim No.1, as contained in the order dated 10th

September, 2005 is read in this case. He has further contended

that the whole purpose of opposing the present application by the

defendants is to seek de novo trial. In other words, defendants will

seek time to file amended written statement and recall of the

plaintiff‟s witnesses for further cross examination. This will not do

any good to anyone except that final adjudication will get delayed.

In nutshell, contention of learned senior counsel for the plaintiff is

that there is no need to amend the plaint. Learned Senior counsel

has further contended that plaint is not required to be amended if

not necessary. According to him existing pleadings are sufficient to

indicate that defendant has understood the claim of plaintiff

regarding sensitization by tin of the mirror manufactured by it.

Subsequent event of amendment in claim No.1 can be taken note of

in this case without amending the pleadings of this case. Reliance

has been placed on Popat and Kotecha Property vs. State Bank of

India Staff Association (2005) 7 SCC 510, Manoj Beharilal Mathur

vs. Shanti Mathur AIR 1997 SC 2153, U.P. State Roadways

Transport Corpn. Vs. Mrs. Shanti Devi and others AIR 1997 Del

342, A.K. Jain vs. Prem Kapoor 2008 (8) SCC 593, Hyundai

Corporation vs. Rajmal Ganna 2007 (35) PTC 652, Rameshwar Lal

and Anr. Vs. Raghunath Das and Ors. 1990 (4) SCC 729 and

Central Academy Society School vs. Raj Kumar Ganjur AIR 2003 All

194"

9. Per contra, learned senior counsel for the defendants has

contended that the plaintiff is seeking amendment in claim no. 1

without amending the plaint, which is not permissible under the

law. He has further contended that in the order dated 10th

September, 2009 it has been categorically mentioned that the

amendment does not attract the provisions of Sections 58 and 59 of

the Patents Act; meaning thereby amendment in claim no. 1 was

not allowed under the said provisions of Patents Act. Accordingly,

amendment can be read only in CS(OS) No.593/2007 and not in

other proceedings. Amendment in claim no. 1 permitted by the

Court was not recorded in the Patent Office. Certified copy of the

Patent Ex.PW1/3 has been issued by the Patent Office in the month

of March, 2009, which does not contain amended claim no.1. This

indicates that amendment was not allowed under Sections 58 and

59 of the Patents Act. Amendment could at best be read as an

amendment of claim No.1 in that particular suit and not in patent

records. Learned senior counsel further submits that plaintiff has

to amend claim no. 1 in this case and for the said purpose he has to

file appropriate application under Order 6 Rule 17 CPC seeking

amendment in claim no.1 which application is, otherwise, not

permissible in this case as the trial has already commenced,

inasmuch as, plaintiff‟s witnesses have already been cross-

examined. The only contention acceptable under the law is that a

plaint can be amended after the start of trial when the plaintiff had

exercised due diligence and in spite of that he could not seek the

amendment earlier. In the instance case, plaintiff was well aware of

the order dated 10th September, 2009; whereas plaintiff‟s evidence

was concluded in this case on 21st July, 2011, much thereafter. In

any case even if such an amendment is permitted in the present

suit the defendants have to respond to such amendment by filing

amended written statement, inasmuch as, have to cross examine

the plaintiff‟s witnesses on this point. Learned senior counsel for

defendant has further contended that the plaintiff cannot be

allowed to bring on record the amended claim no. 1 in this case

indirectly so as to prejudice the defendants. Under the Patents law

a patent can be obtained either in a product and/or in a process.

Claims Nos.1 to 8 in the suit reflect product patents; whereas claim

Nos. 9 to 20 are the process patent. By adding tin in the product

claim no. 1, the plaintiff is trying to expand its monopoly even in a

product having layer of tin by way of such amendment, which is not

permissible under the law. Reliance has been placed on Electric

and Musical Industries Ltd. and Boonton Research Corporation Ld.

Lissen, Ld. And and another 1939 (46) RPC 23.

10. I have considered the rival contentions of both the parties and

I am not able to persuade myself to accept the contention of learned

senior counsel for the plaintiff that the amendment in claim no. 1,

as permitted in CS (OS) No. 593/2007, can be read in this case

without amending the pleadings of this case. It is well settled that a

case is decided on the facts involved therein as are emerging from

the pleadings duly proved by the evidence adduced in support

thereof. No judicial notice of the facts emerging from the pleadings

and the evidence led in some other case can be taken for deciding

the controversy between the parties in a different case. It is the fact

pleaded and the evidence led in that particular case alone which

has to be considered. Judicial pronouncements can be referred to

at the bar in support of a legal preposition but the facts involved

therein cannot be read as the facts of such cases where such

reports are referred. Subsequent events can be considered only if

the same are brought on record by seeking necessary amendment

in the pleadings and not by noticing the same from the facts

emerging from the pleadings and the documents of other cases,

which may have been referred to in the reports. Even though

plaintiff is at liberty to refer and rely on the order dated 10th

September, 2009 passed in CS (OS) No. 593/2007 in support of law

laid down therein but the fact remains that the amended claim no.

1 cannot be read in this case. Judgment has to be pronounced in

this case on the pleadings and the evidence adduced i.e. either

documentary or ocular, in this case. It appears that plaintiff was

conscious of this fact and for this reason only plaintiff had

expressed its desire to amend the plaint initially, as is evident from

the perusal of order dated 5th February, 2010. However,

subsequently, on 3rd May, 2010 counsel made a statement that he

does not intend to file any application for amendment.

Consequently, issues were framed. Merely because amendment of

the pleading would result in delay in disposal of the suit by itself

cannot be made a ground to adopt a shortcut by reading the

amended claim No.1 as permitted in CS (OS) No. 593/2007 in the

present case, without amending the pleadings. Plaintiff cannot be

permitted to achieve its objective of amending the claim no. 1 in

this case indirectly.

11. If the matter is viewed from another angle then also the

course adopted by the plaintiff cannot be permitted. Amendment in

claim no. 1 as allowed in CS (OS) No. 593/2007 has yet not been

recorded by the Patent Office in its record. Certified copy of patent,

issued by the Patent Office after more than 6 months of the order

dated 10th September, 2009, contains unamended claim no.1. It is

this certificate which has been placed on record in this case and

has been proved. Plaint also contains unamended claim. Evidence

led by the parties, which is in consonance with the pleadings of the

parties, alone can be read at the stage of final adjudication of the

matter. There is no gainsaying in reiterating that evidence led

beyond the pleadings cannot be looked into. Accordingly, the

amended claim no. 1 cannot be read in this case without plaintiff

taking necessary steps to get the claim amended in this case as

well.

12. Judgments relied upon by the plaintiff are in the context of

different facts and are of no help. In none of the reports it has been

laid down that facts emerging from the pleadings and evidence led

in a case can be read in other cases. In Popat and Kotecha Property

(supra), Order 7 Rule 11 CPC was under scrutiny and in this

context Supreme Court held that the plaint has to be read as a

whole and not just a part of it. In Manoj Beharilal Mathur (supra),

it was held that plaint is not required to be amended, if not

necessary. If issues can be decided on existing pleadings and

documents, no amendment in pleading is necessary. In the said

case a suit was filed for declaration to the effect that Dr. Shanti

Mathur was a benamidar and the property belonged to joint family,

therefore, she had no right, title and interest in the plaint scheduled

property. Subsequently, an application for amendment of plaint was

filed on the ground that Dr. Shanti Mathur was a trustee of the

property for and on behalf of the plaintiffs. This application was

rejected by the Trial Court as well as the High Court. In this

context, Supreme Court held that it was open to the plaintiffs, even

without resorting to amendment of the plaint, to press their

arguments based on the legal effect of the benami transaction and

that Dr. Shanti Mathur is a trustee of the property for the benefit of

the joint family. Since legal issue was involved, it was held that no

express amendment was required. However, in this case,

amendment on factual aspect allowed in a different case is sought

to be read as part of the present suit, which course is not

permissible under the law. In A.K. Jain (supra), landlord had filed

an eviction petition on the ground of bonafide requirement. During

the pendency of the petition landlord retired from service. This fact

was not brought on record. Supreme Court held that the factum of

retirement was not in dispute and could have been taken note of

even without a formal amendment of the pleading. In Hyundai

Corporation (supra), plaintiff had brought the case on the plea of

infringement of registered trademark but based on registrations in

the names of Group companies. During the pendency of the matter

plaintiff acquired proprietary rights in its own name by virtue of

registration of trademark in different classes effective from dates

much prior to filing of the suit. It is in this context, while deciding

an application under Order 39 Rule 1 and 2 CPC, it was observed

that court can take cognizance of a subsequent event without

amendment of pleadings. In Rameshwar Lal (supra), landlord had

filed an eviction petition on bonafide requirement of comparative

hardship but the same was not specifically pleaded, however,

evidence of hardship was already on record. In these facts, it was

held that amendment was not required since evidence of hardship

was already on record. In Central Academy Society School (supra)

also, it was held that no amendment was necessary. In the said

case sufficient material was on record to indicate the amount of

rent deposited in court, thus, it was held that no amendment of

pleading was necessary. However, facts involved in this case are

totally different. Amendment of claim no. 1 has not been sought in

this case nor such amendment is supported by the certified copy of

patent issued by Patent Office. Only after amendment is recorded

in the Patent Office it will amount to notification of amended patent

to all concerned and can be said in „rem‟. The pleadings of this case

as also the documents placed on record are with regard to

unamended claim. Without seeking amendment of claim no. 1 in

this case plaintiff seeks to refer and rely upon the amended claim

no. 1 in different suit, which is not permissible, in view of the

discussions made hereinbefore.

13. For the foregoing reasons, I am of the view that plaintiff

though can refer the order dated 10th September, 2009 passed in

CS (OS) No. 593/2007 at the time of hearing but same cannot be

permitted to be taken on record as a document so as to read the

amended claim No.1, in this case. Amendment in claim no. 1, as

permitted in CS (OS) No. 593/2007, cannot be read as amended

claim No.1 in this case. As regards permission to the plaintiff for

placing on record certified copy of amended patent no. 190380 as

and when received from the Patent Office, the same also cannot be

granted at this stage. However, plaintiff is at liberty to file

appropriate application as and when he receives the certified copy

from the Patent Office.

14. Application is disposed of in the above terms.

I.A. No. 13631/2011 (u/Sec. 151 CPC by Defendants)

In view of disposal of I.A. No. 12535/2011 this application

has become infrcutous. Accordingly, application is disposed of as

infructuous.

A.K. PATHAK, J.

November 02, 2011 ga