Prop Notes

Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979) 2 SCC

511
Facts –
Plaintiff is a registered partnership firm carrying on the business of manufacturing brass and
German silver utensils at Mirzapur. Defendant is a concern carrying on the business of
manufacturing dishes and utensils in Mirzapur. The old method of manufacturing utensils,
particularly shallow dishes, was to turn scarp and polish them on some sort of headstock
without a tailstock, the utensils either being fixed to the headstock by thermoplastic cement
or held in the jaws of a chuck fixed to the head-stock. This system was, however, fraught
with risk to the workers inasmuch as the utensils used to fly off from the headstock. To
introduce improvement, convenience speed, safety and better finish plaintiff invented a
device and method for the manufacture of utensils and got the alleged invention patented
under the Indian Patent and Designs Act, 1911. The defendant started using plaintiff’s
patenteed method for manufacturing of dishes, against which the plaintiff filed the case of
infringement. The defendant filed a counter – claim, praying for revocation of the patent on
the grounds that the alleged invention did not involve any inventive steep and has no utility.
Judgement –
The learned trial judge was right in holding that the patented machine was neither a manner
of new manufacture or novel improvement, nor did it involve any inventive step, having
regard to what was publicly known or used prior to the date of the patent. The grant of the
patent in question was therefore, invalid and was liable to be revoked.

Thomson Brandt v. The Controller Of Patents And Designs 1989 SCC OnLine Del 73
Facts –
This first appeal under Section 116 of the Patents Act. 1970 is directed against the order
dated 8th March, 1984 of the Asstt. Controller of Patents & Designs, New Delhi (hereinafter
called 'Controller') whereby application Patent No. 342/Del/SO of the appellant filed on 9th
May, 1980 for grant of patent in respect of a process of manufacture was rejected.
During the course of hearing before the Controller the statement of claims was amended and
remanded and the final statement of claim reads as under: "Statement of claims:
1. A process, for pacifying a gaseous medium, transparent to optical thermal radiation, the
optical and infrared (IR) bands of electromagnetic waves spectrum comprising diffusing in
the said medium a boron pacifying aerosol, at a delivery rate sufficient to attenuate
electromagnetic radiations extending from 0 4 to 15 urn to an extent greater than 90%
2. The process as claimed in claim I wherein said aerosol is stored, in liquid form, in u
receptacle comprising means for diffusing said aerosol.
3. The process as claimed in claim I, wherein said aerosol is stored, in a gaseous form, in a
receptacle comprising means for diffusing said aerosol.
4. The process as claimed in claims I, wherein said gaseous medium is formed by the
atmosphere.
5. The process as claimed in claim I wherein said gaseous medium is formed by the output
flow from a propulsion system.
6. The process as claimed in claim I wherein said boron dichloride aerosol is diffused in the
presence of sufficient water vapour to hydrolyze the boron pacifying.
7. The process as claimed in claim 6, wherein said aerosol and the water from which said
water vapour is obtained stored separately in receptacle and are dispersed conjointly.
8. A process for pacifying a gaseous medium, transparent to optical and thermal radiation in
the optical and infrared (IR) bands of the electromagnetic wave spectrum substantially as
herein described".
Page 7 of the impugned order shows that the attorney for the appellant had cancelled earlier
statements of claims and as such the learned/counsel for the appellant has limited his appeal
to the rejection of patent claim in respect of the above reproduced statement of claims only.
Judgement –
The impugned order is set aside and the matter is remanded back to the Controller for being
disposed of afresh in the light of the observations above after due notice to the appellant.

Yahoo Inc. (Formerly Overture Service Inc.) v. Assistant Controller of Patents and
Designs & Rediff.com India Limited (2011) IPAB 106
Facts –
Overture Services Inc. filed a patent application titled “System and method for influencing a
position on a search result listing generated by a computer network search engine”, and the
title was later amended to “A method of operating a computer network search apparatus.”
This application claimed priority to a US application.
While undergoing examination at the Indian patent office, the examiner raised 17 objections
against the application in the First Examination Report (FER). In it’s reply, Yahoo submitted
new claims to include technical subject matter so as to overcome the objection, and that the
new claims were novel. The Examiner again, in reply to the new claims, rejected claims as
they fell under section 3(k).  The claims were further amended to remove apparatus claims.
In responsive to the last amendment, the patent office informed Yahoo that the application
had been found in order for grant, but it would be granted only after the disposal of pre-grant
opposition, if any.  
Rediff.com India Ltd., filed a pre-grant opposition against the application.  The Controller
informed Yahoo that the the invention did not pass the novelty and patentability test in late
March 2009.  
Judgement –
Court have found that this invention cannot be granted patent. However, it cannot be
disputed that there should be a uniform practice, when similar inventions come up for grant
of patent. There cannot be conflicting positions. If needed the patent office had been
adopting different standards, it is not desirable. Court cannot allow this appeal, ignoring the
patentability bar merely because it is alleged that in other cases erroneous decisions have
been issued. Court cannot examine the correctness of those grants in the absence of that
patentee.

Monsanto Company v. Coramandal Indag Products (P) Ltd (1986)

Facts –
Plaintiff Monsanto Company of St. Louis, Missouri, United States has filed a patent in the
efforts to prevent infringement of 125381(104120 has been voided). The plaintiff suggests
that Coramandal Indag Products; an Indian Private Limited Company has used their
compound 125381;which is similar to the CP53619 discovered in 1966-67 by Dr. John Olin;
which was also a weed killer which was non-toxic to plants. Coramandal Indag has created
two products both containing the active ingredient Butachlor
Judgement –
The court decided to revoke the patent and found no infringement as the active ingredient as
Butachlor is in fact not an invention of the Plaintiff. Rational: It was determined that Butachlor
(common name CP 53619) is in fact was reported in the International Rice Research
Institute in 1969. Since CP 53619 was publicly known before patent 125381 was granted the
suit would be revoked and Coramandal Indag and found no infringement on the Defendants
part.

F. Hoffman-La Roche Ltd. v. Cipla Ltd. 2015 SCC OnLine Del 13619.
Facts –
The dispute arose in Delhi High Court over Roche’s drug ‘Erlotinib’ that was sold by Roche
as TARCEVA. Both Roche and Cipla are based on the compound that goes by the name
Erlotinib Hydrochloride. In February 2007, Roche after claiming that it had been granted a
patent for ‘Erlotinib’ started selling the drug under the brand name TARCEVA. In January
2008, it was reported that Cipla is planning to launch a generic version of ‘Erlotinib.’ This
made Roche initiate infringement proceedings against Cipla. Roche claimed that Cipla had
infringed Patent in 774 also known as ‘Erlotinib Hydrochloride’ which is licensed to Roche.
Roche lost the above suit as the Honorable court felt that stopping Cipla’s manufacture
would be against public interest and so the balance of convenience was in Cipla’s favor. On
appeal, the Division Bench upheld the decision but focused more on the failure of Roche to
establish a prima facie case of infringement. The SLP filed by Roche against the decision
was declined as well. The parties then returned to the single judge to the trial on main relief;
the judge delivered judgment and Roche could not sufficiently prove that Cipla’s
manufacture of Erlocip infringed its patent IN774. The case was then taken to the Division
Bench where the case went in favor of Roche.
 Judgement –
The judgment finally went in favor of Roche. The guidelines applicable to many crucial
aspects of a patent infringement were clearly laid down in the Judgement. Cipla was made
liable to render accounts concerning manufacture and sale of Erlocip and decreed costs in
favor of Roche of Rs. 5, 00, 000. The Court did not, however, grant a permanent injunction
on manufactured by Cipla.

Enercon India Ltd. v. Aloys Wobben 2010 SCC OnLine IPAB 194
Facts –
The first respondent herein (hereinafter referred to "as the Company") had filed 18 Original
Revocation Applications before the Tribunal for revocation of the patent granted in favour of
the writ petitioner under Section 64 of the Patents Act. In the said original revocation
application, the writ petitioner filed the miscellaneous petitions for dismissal of the original
petitions. The case of the writ petitioner was that he is the owner of the various Patents,
pursuant to the grant of Patent by the Patent office during 2006 and the first respondent
company filed original applications for revocation of the Patents and these applications were
pending before the second respondent Tribunal. In those applications, the writ petitioner has
filed individual miscellaneous petitions with the prayer to dismiss the revocation petition filed
by the first respondent company and to fix an early date for hearing the miscellaneous
petitions challenging the maintainability of the revocation petition.
Judgement –
The facts of the case clearly indicates that there is a definite possibility of appeal against the
decision of the Tribunal and the present writ petition itself is one such illustration. Therefore,
in our view, the Tribunal rightly directed the miscellaneous petitions to be considered along
with the respective Original Revocation Applications and also directed the case to be posted
on a specific date and the hearing to be continuous on day to day basis.
Telefonaktiebolaget Lm Ericsson v. Intex Technologies (India) 2015 SCC OnLine Del
8229
Facts –
Telefonaktiebolaget LM Ericsson, a company incorporated under the laws of Sweden,
against the orders passed by the CCI .The said orders were passed pursuant to information
filed by Micromax Informatics Ltd. and Intex Technologies (India) Ltd alleging abuse of
dominance by Ericsson with its large portfolio of Standard Essential Patents and demanding
heavy royalties. Ericsson has on the other hand claimed that its patents have been infringed
by Micromax and Intex. The information filed by Micromax and Intex led the CCI to pass the
aforesaid impugned orders directing the Director General, CCI, to investigate the matter
regarding the violation of the provisions of the Competition Act. Thus, aggrieved and holding
that the impugned orders passed by CCI are without jurisdiction as the commencement of
any proceedings in relation to a claim of royalty by a proprietor of a patent would fall within
the scope of Patents Act, 1970, Ericsson filed a petition before the Delhi High Court.
Judgement –
It was concluded by the Delhi High Court that while it accepts that at the stage of passing an
order, the CCI has to form a prima facie view and this would include a view as to its
jurisdiction to entertain the information/complaint, which it has not done, the Delhi High Court
in the present proceedings under Article 226 of the Constitution of India was not in a position
to supplant its views over that of the concerned authority. The Delhi High Court, while
holding that CCI has clear jurisdiction, also clarified that - nothing stated herein should be
construed as an expression of opinion-prima facie-or otherwise on the merits of the
allegations and all observations and that all observations are in context of jurisdiction of CCI
to pass the impugned orders.

Ferid Allani v. Union Of India & Ors.

Facts –
The Petitioner's patent application was in respect of a method and device for accessing
information sources and services on the web. The patent application consisted of method
claims and system claims. The Patent Office upon examination of the patent application
concluded that the method claims were a computer program and that the system claims lack
novelty as well as inventive step, and on that basis rejected the patent application.
Aggrieved by the rejection of the patent application, the Petitioner preferred an appeal with
the Intellectual Property Appellate Board (IPAB). The IPAB held that the patent application
did not disclose any technical effect or technical advancement and dismissed the appeal.
Judgements –
The Petitioner relied upon various parts of the patent specification, and various guidelines
issued by the IPO in respect of computer related inventions. In this regard, the Petitioner
stressed that patentability of computer related inventions ought to be interpreted in context of
the guidelines issued by the patent office.  The Respondent contended that the Court in its
writ jurisdiction need not interfere with technical merits/technicalities of the patent
application.

Novartis Ag. v. Adarsh Pharma And Anr. 2004 SCC OnLine Mad 402
Facts –
Novartis applied for an exclusive marketing right (hereinafter EMR) pending grant of a
product patent, and was granted the same in November 2003. Consequently, Novartis sued
generic drug makers such as Ranbaxy and CIPLA before the High Courts of Madras and
Bombay on the strength of its EMR. The Madras High Court upheld the EMR and restrained
the said drug producers on various grounds, including, inter alia, the fact that Novartis ran a
free patient access programme titled “GIPAP” (Glivec International Patients Assistance
Program) and undertook to make this programme even more user friendly to patients that
could not afford the drug. The injunction was then further confirmed by a division bench of
the Madras High Court, in an appeal filed by the Indian generic companies.
Judgements –
The order granting injunction dated 20.01.2004 is made absolute and all the applications
filed to vacate the injunction were dismissed