Topic: Sandeep Jaidka vs Mukesh Mittal - Patent

Sandeep Jaidka vs Mukesh Mittal & Anr
IN THE HIGH COURT OF DELHI AT NEW DELHI - I.A. No.15260/2010 in CS(OS) No.1900/2010 - CORAM: HON'BLE MR.JUSTICE MANMOHAN SINGH - Judgment delivered on: May 09, 2014

MANMOHAN SINGH, J.
1. By this order, I propose to decide the pending application under Order 39 Rule 1 and 2 CPC being I.A. No.15260/2010 filed by the plaintiff.

2. The present suit has been filed by the plaintiff against the defendants for permanent injunction restraining infringement of its registered patent bearing No.231895 (hereinafter referred to as the "said patent"). The said patent is registered in respect of device for producing heating, cooling and aromatic effects (hereinafter referred to as the "said product"). It is the case of the plaintiff that the defendants are wilfully infringing that said patent i.e. by introducing in their 4D theatre a device/system which produces aromatic/heating, cooling and other effects corresponding to the scene appearing in a movie, thus infringing plaintiff's patent and as a result of these acts of wilful infringement, the plaintiff is suffering grave, irreparable loss and damage.

3. Case of the plaintiff

(i) The plaintiff is an innovator in the field of electronics and has several patents to his credit. The plaintiff invented a novel system i.e. device which produces heating, cooling and aromatic effects corresponding to the scene appearing in a movie. Such effects are commonly termed as '4D' effects. He was granted the said patent in India on 13th March, 2009 for such a system. The invention of the plaintiff is a combination of a hardware and software, which together are designed to control and synchronise the movie played for a multi-sensory show.

(ii) The effects are achieved by:

(a) Playing the movie,
(b) Recording certain codes (which represent special effects such as rain, wind effect, animal etc.) against each desired scene on the film (the movie film) using timeline/digital coding system,
(c) Fixing special device (such as spray unit with nozzle at the back of the chair, wind effect producing unit in surrounding/environment of the theatre etc.) and synchronizing these systems to provide special effects corresponding to the scene appearing in the movie,
(d) Playing the recorded special effects synchronized with the desired scene in the movie, and
(e) At appropriate/precise time, activating the effects already encoded on the film using an electronic decoder/micro- controller as also activating the movie control system so that the viewer gets a multi-sensory effect while watching a movie
(iii) Claim 1 of the plaintiff's patent reads as follows:
"1. A device for producing heating/cooling/aromatic effects of at least one of waterfall, rain, garden, mountains, desert, animals, kitchen and river scenes while viewing a picture, an advertisement or playing amusement games in a cinema hall/open theater/TV comprising:
movie film/video tape/disc recorded with coded signals such as herein described for producing effects of at least one of waterfall, rain, garden, mountain, desert, kitchen and river scenes of advertisements, said coded signals either recorded separately or embedded on the sound signals;
an electronic decoder for decoding said signals when said effect is to be expressed or a particular scene appears; and actuating means connected to an output of the electronic decoder for releasing gas/perfumes or energizing heating/cooling means to produce the desired effects corresponding to the scene appearing on a scene of the cinema hall/open theater/TV."
4. The plaintiff is also the holder of a corresponding patent in USA, bearing US 6,152,829 granted on 28th November, 2000. Specific statement is made in the plaint that the product of the plaintiff became very popular. It received wide acclaim and was lauded by various newspapers and magazines.
5. Case set up by the plaintiff against the defendants is that in November 2009, the plaintiff learnt about the defendants. The defendant No.1 is the owner of a 4D Theatre located called "funvilla" within the Metro Walk Mall, Rohini. Defendant No. 2 is the manufacturer and supplier of 4D Theatre equipment and supplying the infringing 4D theatre equipment to defendant No.1. For the purpose of enquiries, the plaintiff introduced himself to the defendants as a prospective purchaser of a 4D theatre in Delhi. There was an exchange of emails between the parties. Defendant No.2 acknowledged and admitted that they supply equipment required for a 4D theatre especially for providing multi-sensory effects such as wind effect, smell effect, rain effect etc. in India including defendant No.1. It is submitted by the plaintiff that the assertions made by the defendant No.2 in the said emails and the website of defendant No.2 make it clear that the system supplied by defendant No.2 and installed in defendant No.1's 4D theatre for exhibition of 4D effects clearly infringes the plaintiff's patent. Even the plaintiff on 18th November, 2009 himself visited Funvilla to ascertain whether the systems installed by the defendant No.1 actually infringe the patent of the plaintiff. The plaintiff observed that the 4D theatre "Funvilla" is built exactly on the same principles and using exactly the same system as patented by the plaintiff.

6. It is submitted by the plaintiff that the system and device used by the defendant No.1 in his 4D theatre infringes claims of the plaintiff's suit patent. All the requirements of claim 1 stand fulfilled since-

a. The movie played included coding signals for the multi-sensory effects (i.e. rain-wind-smell effects etc.) b. There is an electronic decoder for decoding said signals when the effect is to be expressed c. There is an actuating means connected to the decoder for producing desired effects corresponding to the movie scene.
The application of the suit patent was filed as far back as 1999. It was published and laid open to the public on 12th September 2008. The same was available for inspection to the public. The defendants after a gap of about 1 year of grant of patent, started providing the 4D effect, having gained the benefit of the technology published in the plaintiff's patent and copied the same in their 4D theatre.

7. Defendant No.1 and 2 both filed written statements. However, defendant No.1 stopped appearing before this Court and was proceeded ex parte vide order dated 27th August 2012. Defendant No.2 is the contesting Defendant and has also filed a counterclaim for revocation of the said patent.

8. It is the case of the defendant No.2 that the said patent claimed to have been invented by the plaintiff, is neither an invention nor is it an innovation attributable to the plaintiff. The device as explained by the plaintiff in the said patent is prior art and there is no valid ground on which the said device or the process could be granted patent. Each one of the claims of the plaintiff is part of prior art and various patents have been granted in respect of the technology claimed to have been invented by the plaintiff. For instance, with regard to claim 1 of the plaintiff's patent, the device of producing special effects/ theatrical impressions such as heating/ cooling/ olfactory effects synchronized while viewing the corresponding picture has been subject of earlier patent granted in the name of John H. Leavell. The said patent was filed in the year 1927 and the subject matter of the same is in public domain. Similarly, the technology of using binary codes for the purpose of synchronizing the expunction of aroma or other special effects to the respective picture or video is a subject of earlier patent granted in the name of Donald Spector, which patent is also in public domain. The US patent of the plaintiff also contains claims similar to that of the Indian patent. The said US patent also suffers from non-inventiveness and is obvious, already in public domain and is also liable to be revoked.

The device/system manufactured or installed or used by defendant No.2 is as per client's specifications. It is submitted that the defendant No.2, inspired by an earlier patent of Morton L. Heilig in respect of chair that houses a device for producing special effects and further through its research has developed the device producing special effects that could be fitted in a chair so that each and every one of the spectator could perceive the effects in a better manner. The chair device that has been developed and manufactured by the defendant No.2 functions in a totally different manner than the device claimed by the plaintiff in its patent. The plaintiff has not come out with any material evidence that the device used by the defendant is same as that of the plaintiff. The plaintiff has not put the patented technology to industrial use as required by the statute.

Apart from the usual effects such as heating, cooling, aromatic effects to which the plaintiff's patent pertain to, the equipments of the defendant No.2 also creates motion stimulation and other such effects such as tickler effect, smoke effect, strobe light effect which are totally outside the purview of the plaintiff's so-called patent. The email correspondence and the web pages extracts of the defendant No.2's website prove that their process and device are totally different from that of the plaintiff.

9. It is stated that the defendant No.2 is a well known and a reputed company in the business of manufacturing motion simulators for a substantial number of years. While so, the present suit of the plaintiff on baseless and frivolous grounds is only meant to harass the defendant No.2. It is denied by the defendant no.2 that 4D effects can be achieved only through the plaintiff's patented system. The technology for 4D effects have been in public domain for several decades and no one can claim monopoly over the same. The claims of the plaintiff's patent, either singularly or cumulatively are subject of previous patents and/ or are well known among persons skilled in the art.

10. It is denied by the defendant No.2 that the plaintiff on his visit to Funvilla was able to see the device which is responsible for producing the 4 dimensional effects and perceive that it is built exactly on the same principle and same system as patented by the plaintiff. The statement of the plaintiff does not have an ounce of truth in it as the 4D show is run only for a period of 5 to 6 minutes inside a closed room with no external lights. While so, no man with ordinary eye sight would be in a position to see the person next to him, leave alone identifying the technology and the device used by the defendant No.2 to produce various effects.

11. The defendant No. 2 has also filed a counter claim in the matter stating that the plaintiff's patent ought to be revoked. Amongst grounds as taken in the written statement, it has been stated that the said patent be revoked under Section 64 (1) (h) of the Act as the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed. The plaintiff's patent for the device and process for producing effects does not properly disclose certain important details such as the exact room measurement within which the disputed invention would be best workable, screen specification, distance between the viewer and the screen, distance between the device for producing effects and the viewer, the type of wiring that could be used, etc. The said patent specification does not describe the invention and the claims of the plaintiff's patent are not by themselves sufficient to enable a person in India possessing average skill/ knowledge of the art to which the invention relates, to work the invention. Further the plaintiff's patent does not disclose the best method of performing the invention. The plaintiff's patent ought to be revoked.

12. In the replication, it is submitted by the plaintiff that the plaintiff's patent is not a subject of any prior art or invention in the public domain. It represents a complete advancement in technology which requires no manual intervention and all signals as desired in a movie are digitally encoded. US patent No. 3628829 granted to Mr. Hellig represents a very old technology and is only concerned with emitting aromas in synchronization with a cinematographic film and is totally dehors of any digitalization. Therefore, it is false on part of the defendant No.2 to aver that the said US patent or any other patent covers or uses the technology as disclosed by the plaintiffs patent.

It was denied by the plaintiff that the defendant's device is different from that of the plaintiff's patent. It was also denied that the plaintiff's system has been the subject of earlier patent granted to John Leavell since Leavell's patent is only concerned with aroma producing device, whereas the plaintiff's patent is concerned with the entire system within a theatre which provides the heating, cooling and other olfactory effects which are synchronised with the corresponding movie. It is reiterated that the patent of the plaintiff is used in India and in fact has become very popular in the Indian market. It is not relevant fact that certain components or parts of the plaintiff system are in public domain. What has been claimed by the plaintiff is a complete system wherein all these effects are provided collectively and through a completely different method that is by encoding electronic signals, which is not found un any of the patents in prior art.

13. Similarly in the written statement with respect to the counter claim filed by the defendant No.2, it is stated that none of the technologies described in any of the patents as mentioned by the defendant no.2 is concerned with or gives any clue to the development of the technology covered by the plaintiff's patent. It was denied that the plaintiff's patent ought to be revoked since the claims made therein lack inventive steps. It was stated that the inventive steps had been tested by the Indian Patent office as well as US Patent Office and has been subject to the strictest of scrutiny. Hence it cannot be said that the patent lacks inventive steps. It is denied that the plaintiff has copied pieces from various existing patents in fact, most of the patent cited by the defendant have not even been practiced and have never entered the public domain. All of these patents have been granted for abstract ideas. None of the patent in real life were implemented. It was denied that such technology as covered by the plaintiff's patent was available or practiced any time prior to 1997.

14. Ms. Pratibha M. Singh, learned Senior counsel appearing on behalf of the plaintiff has made various submissions. Relevant arguments are outlined as under:-

a) The plaintiff on visiting the theatre of the defendant No.1 personally, found that the equipment installed at the theatre of Defendant No.1, manufactured and supplied by Defendant No.2 infringes his patent. The Defendants cannot deny the fact that multiple effects are produced by their equipment in coordination with the film, but Defendant No.2 disputes the usage of coded signals as well as the method of synchronization of the effects with the film. Learned Senior counsel for the plaintiff has referred to the order dated 11th February, 2013 passed by my learned brother Judge in which it was observed that "After hearing some arguments, this Court is prima facie of the view that the Defendant's defence that synchronization is achieved through time reference without use of any coded signals, is difficult to accept."
b) It is argued by Ms. Pratibha M. Singh, learned Senior counsel for the plaintiff that the statement made by the defendants in their written statement are totally contrary to documents filed, which show that the defendants are infringing all elements of claim No.1. In order to show that conduct of the defendants, the learned counsel has referred first the written statement filed by the defendant No.2 wherein it has been stated that the equipment supplied by it, does not infringe the Plaintiff's patent. In paragraph 15 of the written statement, Defendant No.2 provides the following comparative table:

Plaintiff's device & process Defendant no.2's device & process Movie films, video tape/disc Coded signals are not used.

   recorded with coded signals            Further, films or video tape are not
   recorded or embedded on sound          used but video is rendered from
   signals.                               hard disks in computers or
                                          ordinary DVD player.


Electronic decoder is used for No electronic decoders are used as decoding signals when said effects no coded signals are used. is to be expressed or a particular scene appears.

Synchronization is achieved through Synchronization is achieved actuating means that is connected to through time reference and by an output of electronic decoder. usage of software programmed to perform a sequence of actions based on time reference.

The actuating means that control Devices that produce effects are production of effects can be a controlled by controller cards solenoid for producing effects. manufactured by reputed Further devices such as optical companies and are freely available device, filters etc., are vital for the in electronic shops all over the functioning of the patented device. country. Further devices such as optical device, decoders, filters, etc. are not used in the device and process of the 2nd defendant.

The learned Senior counsel for the plaintiff argues that the documents filed by Defendant No.2 contradict their statement made in the written statement and argument addressed by the counsel that coded signals are not used. Counsel has relied on the following documents filed by Defendant No.2:

(i) Exhibit A to Equipment Purchase Agreement between Defendant No.2 and a third party (page 15 at page 20, Documents of Defendant No.2, filed on 16th November 2012):

Section 1 titled "Dynamic Motion Bench", last bullet point refers to "digital linear encoders".

If indeed no coded signals were being used, there would be no necessity for an encoder.

(ii) Page 22 of the same document refers to a "Centralized Control Panel"

which consists of inter alia:
 "motion programs along with special effects stored on HDD,  system synchronizes operation of motion base, operation of special effects signals, audio and video streaming.
 Positional data feedback from actuators obtained from digital linear transducers on base."
It is argued that the Defendant No.2 has made false statements in its written statement to mislead the Court, and Defendant No.2 does in fact use coded signals by which synchronization is achieved between the film and the special effect. Defendant No.2 also uses actuating means as demonstrated from the document extracted above.

In support of her argument, learned counsel has also referred the written statement of Defendant No.1 states as follows in paragraph 5:

"The Defendant No.2 has supplied a few films to the Defendant No.1 and according to the events/movements in the said films, the Defendant No.2 has prepared a motion programme where all interlocks, conditions and I/O triggers are added according to the sequence in the film together with assembly of various kinds of machinery for creating the physical effects...by using motion controller of GALIL DMC 1842, which is designed to control 4 individual axis, and it has 8 opto isolated digital outputs and 8 inputs."
In paragraph 7 of the written statement of Defendant No.1, it is stated:

"The motion programme has been prepared by the Defendant No.2 by adding all interlocks, conditions and I/O triggers in the motion programming as per the movements and sequences in the film and saved on a disc....Thus when the film and the motion programme (software programme) is run together by the operator all I/Os added to the motion programme will trigger the special effects added to that particular sequence"
15. It is argued by the learned Senior counsel that it is incorrect that its equipment does not use coded signals. The following are the reasons:

(a) Defendant No.1 admits the use of GALIL DMC Controller cards. The Plaintiff has handed over a copy of the instruction manual for the GALIL DMC Controller card, which clearly indicates that an "Encoder" is an integral part of the device. This reveals the use of coded signals.

(b) The written statement also reveals that a "motion programme" is used to achieve synchronization. A motion programme is based on coded signals, and therefore, this statement reveal the false averments made by defendant No.2.

16. It is submitted that the Defendants' use equipment that uses each of the ingredients of the Claim of the suit patent, including:

(a) a movie or a film with coded signals that are recorded separately or embedded with the sound signals.

(b) an electronic encoding and decoding mechanism

(c) actuating means connected to an output which results in synchronization of the scene with the effect.

17. In order to respond to the evidence of the prior art relied by defendant No.2, the plaintiff has supplied a chart in order to demonstrate that the earlier patent registered in the names of third parties are different technologies as compared to the new invention of the plaintiff in the suit patent. The details thereof read as under:

Sl.No. Prior Art Document/Reference Plaintiff's Response/Reference

1. US 1749187 dated 31st August The whole system is manually 1997 operated. Uses taps and tanks.

"Method of and apparatus for presenting theatrical impression"

2. US 2861806 dated 17th July 1986The patent is associated with physical movements rather than "Rocket Ship Amusement providing any visual or sensory Apparatus"

perceptions.

3. US 4629604 dated 2nd December Applies only to aroma and not 1983 to other effects such as waterfall, rain, garden, "Multi-Aroma Cartridge Player"

mountains, desert, animals, kitchen and river scenes

4. US 5760873 dated 26th April Heating system that runs on 1994 thermal signals. Not appropriate for any other effects other than "Process and device for the aroma synchronous addition of odours to visual and/or acoustic stimulation"

5. US 5972290 dated 7th April 1997 Not prior art because it was not published before June 1997.

          "Process and equipment for the
          programmed      scenting    of Completely                  different




           environments"                     mechanism which requires a
                                            specific equipment where the
                                            capsules of aromatic substances
                                            can be inserted and punctured to
                                            disperse fragrance.


18. It is argued by the learned Senior counsel that none of the five documents pertain to the production of multiple special effects through a mechanism of coding. The Plaintiff holds a valid and subsisting US patent, granted to him after a rigorous examination process. It can safely be presumed that the USPTO has had the opportunity to examine these documents before granting a patent to the Plaintiff, and hence the challenge to the validity not be taken seriously. The Defendants challenge to the validity of the patent is untenable at the interim stage because they have failed to produce even the affidavit of an expert explaining why the invention would be obvious or anticipated by prior art, from the position of a person skilled in the art. Counsel has referred to the decision of this Court in the case of Strix Limited v. Maharaja Appliances Ltd. reported in MIPR 2010 (1) 181 wherein it has been held that that:

"22. ...In order to raise a credible challenge to the validity of a patent, even at an interlocutory stage, the Defendant will have to place on record some acceptable scientific material, supported or explained by the evidence of an expert, that the Plaintiff‟s patent is prima facie vulnerable to revocation. The burden on the Defendant here is greater on account of the fact that there was no opposition, pre-grant or post-grant, to the Plaintiff‟s patent. ...
23. In the instant case, the prior art cited by the Defendant, i.e. the European Patent, is not even prima facie a prior art that teaches the Plaintiff's invention. It works on a very different principle. Further, the Defendant has been unable to show that the Chinese supplier from whom it is purchasing the infringing product, holds a patent for it. It is not even the Defendant's case that the said product per se does not infringe the Plaintiff's patent. The only defence is that the Plaintiff's patent lacks novelty and its validity is vulnerable on the ground of obviousness. This, for the reasons already discussed, has not even prima facie been established by the Defendant. It is not possible to agree with the contention that the Plaintiff's patent is a mere trade variant of a known product. The Plaintiff has been able to prima facie show that it has been validly granted the patent which appears to be an inventive step in comparison with the prior art cited by the Defendant, viz., the European Patent. There is no merit in the contention that in terms of Section 3 (f) of the Act, the patent ought not to have been granted since the invention is a mere re-arrangement of known elements. In the considered view of this court, such a contention cannot be accepted on a mere averment by the Defendant. The Defendant will have to place on record some scientific literature supported by some credible expert opinion to show even prima facie that the Defendant's product is a mere re-arrangement of already known products. This burden has not been discharged by the Defendant."
19. On behalf of defendant No.2, arguments are addressed by Mr. M. K. Miglani and Mr. Gaurav Miglani. Various submissions are made by both counsel which are outlined as under:

a) The first submission of Mr. Miglani is that the device and process used by defendant no.2 in the system, the sensory effects are achieved in the following way as per the written note supplied:-

(i) In the 2nd defendant's system two computers are used - one fitted with a digital motion controller card (computer 1) and one which contains a simple 3D movie (computer 2) with no special effects coded on such movie (and there's no interconnect between the two computers).

(ii) The DMC cards/Galil cards of 2nd defendant fitted in computer 1 is used to control various motion simulations including producing of special effects such as rain, smoke, aroma etc. The said Galil card is fitted in the PCI slot of a computer. The Galil card works with dedicated software which are available in the free market, viz. Window Servo Design Kit, Windows Utilities - 32bit and Windows Servo Activex Control - 32 bit. The said Galil card produces 5 volt output at a particular interval based on the programming of the above software and that voltage output triggers a suitable electrical relay mechanism. The relay mechanism is connected to a particular special effect medium to achieve desired effect of wind, rain etc.

(iii) In order to achieve synchronization of the movie and the special effects, a simple technique of time-reference is used. The Galil Card is pre-programmed in reference to a given video content such as a movie or video clipping in such a way that for instance, if in a given video content, at its 5th minute, a scene portrays a rainfall or waterfall for duration of 5 seconds, the Galil card can be activated through the DMC to trigger through relays, the water sprinkler effect for duration of 5 seconds at the 5th minute after the Galil card is initiated. The programming is done manually and but for the time reference, there is no point of convergence between the video content and the Galil card that produces the effects. The 2nd defendant operates both video content and the Galil card parellely to achieve the synchronization, i.e., by switching on both the video content and the Galil card at the same time.

b) By relying upon these it is stated by Mr. Miglani that the corollary of this system is that the Galil card that triggers the effects such as sprinkling, tickling, blowing etc., can work even without the video content / video programme, which is not possible on the plaintiff's alleged device, since as per plaintiff's disclosed device, the digital signals are coded onto the film, a decoder decodes those signals and sends it to actuating means to produce desired effects of wind/rain/aroma etc. and the defendant no.2 does not use any decoding or encoding on sound signals or otherwise. Further, the defendant No. 2 does not encode the movie discs / movie file as claimed by the plaintiff through his patent, where coded signals are coded/recorded on the movie film itself.

It is argued that the special effects includes, smoke, leg tickling which are not available in the plaintiff's claims in the impugned patent. The devices that produce motion simulation, water spray, leg tickling, smoke, lighting, apart from just a wind blower are connected through relays with the DMC card and are not in any manner connected with the movie file either virtually or physically.

c) It is submitted by Mr. Miglani that in the defendant's system / device, there's no coding of the sort as described in the plaintiff's patent and specifically claim 1. The defendant's system the movie file is run separately on a computer, and such movie file which is not embedded with any coded signals to produce multi-sensory effects and rather the effects to be produced are separately programmed and manually synchronized through time-reference mechanism. "Coding" as described in plaintiff's patent refers to "encoding" where digital signals are coded onto the film, a decoder decodes those signals and sends it to actuating means to produce desired effects of wind/rain/aroma etc.

d) The system/device of defendant No.2 to produce multi-sensory effects of smell, wind, rain, etc. is not covered within the scope of claim 1. The technology used by defendant No.2 does not amount to infringement of plaintiff's patent. It is alleged that the device and process used by defendant No.2 are largely adapted from prior art patents and materials available from free market and fine-tuned to their needs. As differed from the plaintiff's patent, the defendant No.2 theatres consist of hydraulic operated seats that can shake, shudder or move at various angles. Such chairs are specially and ergonomically manufactured with hydraulic devices to suit the specifications of the defendant No.2. Further, the blowers and other sense stimulating means are controlled by motion controller card, technically know as a 'Digital Motion Controller' (DMC) cards. The DMC cards are manufactured by various companies across the world and defendant No.2 more specifically uses DMC cards manufactured by Galil Motion Control, which are available in free market.

20. It is also argued by the defendant No.2 that the plaintiff by describing a certain way to achieve a result cannot monopolize all ways of doing it, as it was held in Foster Cathead Company v. Malvern M. Hasha and International Tool Company Inc, 382, F.2d 761 at page 765. It is further submitted that by achieving the end result of multi-sensory effects, by completely different means, the defendant cannot be said to have violated the plaintiff's patent. It is settled law that to find infringement it must be demonstrated that substantially the same means are employed to accomplish the same result and it is not enough that the defendant produces the same result, infringement occurs when both the method and the result are substantially the same. (George M Mooney v. Brunswick Corporation, 663 F.2d, 724 at page 736 and Holter Cabot Electric Co. v. Standard Electric Time Co., 111 F.2d, 71 at page 71). The said principle has also been reaffirmed by Indian courts in TVS Motor Company Limited Vs.
Bajaj Auto Limited, 2009 (40) PTC 689 (Mad) at Para 69 (vi).

In order to justify his argument, learned counsel for defendant No.2 submitted that his client had supplied encoders to M/s. Miracle Amusements only for the purposes of controlling the linear movement of cylinders in Hydraulic operated simulators. The said encoder is an electronic measuring equipment, which produces counts, based on the linear movement of cylinder. These counts are sent to Galil controller card, which controls the linear movement of motion cylinders of simulators and is not used for control of any special effects equipments like smoke effect, rain effect, aroma effect etc. It is to be examined after trial that the use of defendant no.2's devices and process for producing special effects are different or technology used by defendant No.2 is similar to the claims made by the plaintiff in their impugned patent or these are two completely different devices and process.

21. Mr. Miglani, learned counsel has also attacked the impugned patent in favour of the plaintiff on the reasons that there are three distinct elements of claim 1, which are:- (i) movie film/video tape/disc recorded with coded signals such as herein described for producing the sensory effects, (ii) an electronic decoder for decoding such coded signals, & (iii) actuating means connected to the output of decoder for release of gas/perfumes etc. The first element of claim (1) itself requires that there must be a movie film/video tape/disc recorded with coded signals. The expression "coded signals" is qualified by its description in the claim itself and that the words "such as herein described" cannot be said to be appearing in the claim without any purpose and since these coded signals have not been described in the claim, some meaning has to be ascribed to them by referring to the patent specification as to what kind of coded signals are contemplated by Claim 1.

22. As agreed by the defendant No.2 who stated that since defendant No.2 is not using a system/device wherein the coded signals to produce multi- sensory effects are coded onto the movie file itself, as described by the plaintiff's patent, the defendant shall not to use / supply a system / device, wherein the coded signals to produce multi-sensory effects of smell, rain, wind etc. are recorded on the movie file itself and are coded against each of the desired scene on such file during the pendency of the present suit and till the time the rights of the parties are finally determined at trial. However, the plaintiff is pressing for an injunction as prayer. Her submission is that the stand taken by the defendant No.2 is contrary to the documents placed on record and certain admissions made in the written statement filed by defendant No.1.

23. It is true that the statement made by both the defendants are to some extent contrary to the documents filed by them. The statement made in the written statement and documents filed do indicate correct observation made in the order dated 11th February, 2013. However, the court has to examine the matter as a whole and not on the basis of mere statement made by the defendants, then it is to be determined as to whether the technology where the plaintiff seeks protection was available prior in time on the date of application of patent or not and as to whether the challenge made by the defendant No.2 in the written statement is genuine one or substantial question of invalidity to show that claim no.1 is vulnerable or not.

24. PRESUMPTION OF VALIDITY I shall take the issue of presumption of validity and 6 year rule. In view of Section 13(4) of the Act, it mandates that there is no presumption of validity in respect of a patent granted under the Act. The Supreme Court in the case of Biswanath Prasad Radheyshyam v Hindustan Metal Industries; PTC (Suppl) (1)731(SC) at Page 740 (para 32) has observed that the grant and sealing of the patent, or the decision rendered by the Controller in case of opposition, does not guarantee the validity of the patent, which can be challenged before the High Court on various grounds in the revocation or infringement proceedings.

25. In the case of J. Mitra Vs Kesar Medicaments; 2008 (36) PTC 568 Del, decided by this court at page 581, Para 51, it was observed that:

"Although the examiner looks into various aspects and makes a rigorous examination of the patent application and opposition thereto, in view if the decisions in Biswanath Prasad Radheyshyam and Standipack Private Ltd the order of the patent controller granting the patent and the decision on the opposition cannot in 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"
26. Under the scheme of the Act, it provides by way of Section 107 that the Defendant may raise as a defense in a suit for infringement of a patent all the grounds on which a patent may be revoked under Section 64.

In case the Legislature had intended to provide prima facie evidence of validity in the case of patents then a provision similar to Section 31 of the Trademarks Act would have been incorporated under the Patents Act, 1970. The Legislature did not incorporate such presumption in the Patents Act as they stand on separate footing.

(i) This court in the case of F. Hoffmann-La Roche Ltd. & Anr v Cipla Ltd. 2009 (40)PTC 125 (Del)(DB),Page 145, para 52, has observed as under:

"Given the scheme of Patents Act it appears to this Court that it does contemplate multiple challenges to the validity of a patent. Unlike Section 31 of the Trade Marks Act which raises a prima facie presumption of validity, Section 13(4) of the Patents Act 1970 specifically states that the investigations under Section 12 "shall not be deemed in any way to warrant the validity of any patent." Section 48 of the Act also is in the form of a negative right preventing third parties, not having the consent of the patent holder, from making, selling or importing the said product or using the patented process for FAO (O.S.) No. 188/2008 Page 34 of 57 using or offering for sell the product obtained directly by such process. It is also made subject to the other provisions of the Act. This is very different from the scheme of the Trade Marks Act as contained in Section 28 thereof. Section 3(d) itself raises several barriers to the grant of a patent particularly in the context of pharmaceutical products. It proceeds on the footing inventions are essentially for public benefit and that non-inventions should not pass off as inventions. The purpose of the legal regime in the area is to ensure that the inventions should benefit the public at large. The mere registration of the patent does not guarantee its resistance to subsequent challenges. The challenge can be in the form of a counter claim in a suit on the grounds set out in Section 64. Under Sections 92 and 92 A the Central Government can step at any time by invoking the provision for compulsory licencing by way of notification. Therefore, the fact that there is a mechanism to control the monopoly of a patent holder (Section 84 and Section 92) and to control prices (by means of the drug price control order) will not protect an invalid grant of patent."
(ii) In Smith vs. Grigg Ld. 41 R.P.C. 149(1), it was observed by Atkin L.J. that:

"the mere fact of the granting of a patent is not in itself an indication that the plaintiff has established to the satisfaction of any authority that he has the right to the monopoly which he claims. In a case of a patent therefore, the mere fact that a patent has been granted does not show that those conditions have been performed which alone entitle a plaintiff to a conclusive right, and therefore, the Courts when they are approached by a plaintiff who says: " I am the owner of the patent, and the defendant has infringed it," say where the patent is of a recent date; "Your right is not established sufficiently by the mere fact that a patent has been granted to you"; and unless there is some kind of substantial case evidenced before the Court that there is infact a valid patent, then the Court refuses to grant an injunction."
(iii) Before the Supreme Court in M/s Bishwanath Prasad Radhey Shyam vs. Hindustan Metal Industrial 1979 (II) S.C.C. 511(2), it was contended that there was a presumption in favour of the validity of the patent but this argument was spurned by their Lordships with the observations that:

" It is noteworthy that the grant and sealing of the patent, or the decision rendered by the Controller in the case of opposition, does not guarantee the validity of the patent, which can be challenged before the High Court on various grounds in revocation or infringement proceedings. It is pertinent to note that this position, viz. the validity of a patent is not guaranteed by the grant, is now expressly provided in Section 13(4) of the Patents Act, 1970. In the light of this principle, Mr. Mehta's argument that there is presumption in favour of the validity of the patent, cannot be accepted."
The Supreme Court further observed "It is important to bear in mind that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an 'inventive step'. To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before. The combination of old, known integers may be so combined that by their working inter-relation they produce a new process or improved result. Mere collection of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent. It is not enough, said Lord Davey in Rickmann vs. Thierry that the purpose is new or that there is novelty in the application, so that the article produced is that sense, new but there must be novelty in the mode of application. By that, I understand that in adopting the old contrivance to the new purpose, there must be difficulties to be overcome, requiring what is called invention, or there must be some ingenuity in the mode of making the adoption. As Cotton, L.J. put it in Blackey vs. Lathem, 'to be new in the patent sense, the novelty must show invention'. In other words, in order to be patentable, the new subject-matter must involve 'ínvention' over what is old. Determination of this question, which is realty is a crucial test, has been one or the most difficult aspects of Patent Law, and has led to considerable conflict of judicial opinion."

27. Para 8-75 at Page 130 of Terrell on the Law of Patents, Sixteen Edition 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."
28. Kerr on Law and Practice of Injunction, 6th Edition on page 320 discusses some principles which may act as guiding factors for the grant of injunction in patent cases. The said factors are stated as follows:-

"If one clear instance of infringement or a wrong prima facie case of infringement is made out and the plaintiff has not been guilty of laches, the court will generally grant an interlocutory injunction in following cases: (1) when the validity of the patent has already been established in a previous action, (2) when the patent is of old standing and the enjoyment under it has been uninterrupted (3) when the validity of the patent is not in issue and notwithstanding that the defendant offers to keep an account."
From the above, it is clear that if there is a strong prima facie case and the validity of the patent already been established in the previous action, the patent is of old standing and the validity is not further seriously questioned, then there is a clear way out to grant injunction. However, in the present case, the patent in question has not been utilized by the plaintiff directly or indirectly in commercial market.

29. In the decision by the Division Bench of this Court speaking through Hon'ble Justice S. Murlidhar in Hoffmann La-Roche (supra), observed that the court has to see the tenability and the credible nature of defence while deciding the grant or non-grant of injunction. If the defendant's case is found to be tenable and there are serious questions as to validity to be tried in the suit, then the interim injunction in this case may not be granted. This practice is prevalent in the patent infringement cases where patentee always presses for injunction either interim or permanent and the defendant always attempts at the interim stage to raise a question on the validity so as to cast doubt in the mind of the court on the validity aspect and seeks refusal of interim injunction. The court faces a bigger challenge in deciding as to which case warrants injunction and which case does not.

30. Even the principles of grant of injunction in the cases relating to patent infringement are no different from that of ordinary civil cases which are normally prima facie case, balance of convenience and irreparable loss. Lord Denning M.R. in his famous speech in the case of Hubbard and Another v Vosper and Another (1972)1 All ER 1023 at 1029, had observed in considering whether to grant an interlocutory injunction, the right course for a Judge is to look at the whole case and form a holistic view of the matter. In the words of Lord Denning, it was observed thus:-

"In considering whether to grant an interlocutory injunction, the right course for a judge is to look at the whole case. He must have regard not only to the strength of the claim but also to the strength of the defence, and then decide what is best to be done. Sometimes it is best to grant an injunction so as to maintain the status quo until the trial.
31. Again in a celebrated case of American Cynamid Co. v Ethicon Ltd. [1975] RPC 513 Lord Diplock speaking for House of Lords in England observed about the object of grant of interlocutory injunction in the following words:-

"The object of the interlocutory injunction is to protect the plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in an action if the uncertainty were resolved in his favour at the trial.
32. The court in such cases has to weigh the case of plaintiff vis-à-vis the case of defendant if the plaintiff is able to satisfy that there is a serious question to be tried and the defence of invalidity of patent raised by the defendant is not credible or weak, then the court can conveniently grant interim injunction in favor of the plaintiff till the pendency of the proceedings.

On the other hand, the defendant's defence as to invalidity of patent is found to be credible one and defendant is able to satisfy that the said defence if proved and thrashed out in trial would lead to defendant being successful in the proceedings, then the interim injunction may be refused on the ground of credible and tenable defence. It is, however, a question of fact as to in which case the former proposition will hold good or the latter.

33. The plaintiff has not even filed any affidavit of any scientific/technical expert and the only affidavit filed by the plaintiff of the inventor himself does not even compare the plaintiff's claim 1 (which is alleged to be infringed) with the defendant's system. The plaintiff has presumed that once it had shown that the defendant's device produces the same effects of rain, wind, smell etc. there is infringement of plaintiff's patent.

34. In answer to the plaintiff's assertion that the multi-sensory effects cannot be achieved by any other means (other than by plaintiff's method), the counsel for defendant No.2 has prima facie been able to demonstrate how the same effects have been achieved world over by different ways, and specially in Hollywood/Universal studios, since 1984 and the first 4D movie

- "The Sensorium" which contained multi sensory effects of wind, smell etc. was produced in 1984 as few documents in this regard have been filed by the defendant vide list of documents dated 31st January, 2014.

35. It cannot be disputed that the defendant's system produces the same effects such as wind, smell, rain etc. but mere showing such claims appearing on the website cannot raise a presumption of infringement, unless the plaintiff could demonstrate that the defendant produces the same results using substantially similar means.

36. Although the patent rights are statutory in nature and the said rights are governed by the rights granted by the certificate under the Act, still the comparative prejudice has to be weighed on the basis of ground realities. It is now well settled that if patent has not been sufficiently exploited in India and there is no user of the said patent in commercially viable form in India, the court may tilt the discretion in the interim stage in favor of the defendant. The said view was taken in the case of Franz Xaver Huema v yash Engineers, AIR 1997 Del 79 (DB) at 82 para 12.

37. From the material placed on record in the present case, it emerges clearly firstly that the plaintiff has not actually used the device/product on commercial scale which is subject matter of patent though it appears to the court that the plaintiff has made his efforts to use the same by way of issuance of licences, however, he was not successful in this regard. Secondly, in another suit i.e. CS(OS) 1035/2010 filed by him for the same patent against Rohit Kapur and Anr., he did not press the interim application as the trial was expedited in the matter. The plaintiff in the same matter has been cross-examined, who gave his evidence with regard to the suit patent. The said matter is likely to be decided at an early date after evidence. Counsel for the defendant No.2 during the course of hearing has referred to the very portion of cross examination of plaintiff's evidence, which would have the impact on the merit of this case also. Despite of the same, the plaintiff is pressing for hearing in the interim application. Various decisions are referred by both sides, however, I am of the opinion that these two factors that have to be kept in mind as mentioned above while deciding the pending application.

38. In order to construe the claims, the court can take aid of patent specification, as it was held in Real Time Data LLC v. Morgan Stanley, 575 F.Supp 2d. 276 at p.283. in the present case, the patent specification itself states that the said coded signals including an idle signal are either analogue or digital signal and are coded against each of the desired scene. The said fact has in fact been admitted by the plaintiff in his cross examination dated 28.02.2012 in C.S(OS) no.1035/2010 at page no. 1 wherein the plaintiff has stated in clear words - "The invention is regarding synchronization of scenes in the movies with smells and sensory effects to the viewers. The end results are achieved by coding/recording on the movie film disk." The coded signals, as per plaintiff's patent may be either analogue or digital; these may be on the sound signal on the movie file or may be separately embedded on the movie file, but such coded signals in the plaintiff's alleged invention are always on the movie file itself, which may be contained in a disc/tape/DVD or any other medium (the medium being irrelevant).

39. In Para 11 of the plaint it was pleaded by the plaintiff that these multi- sensory effects of rain, wind, aroma etc. cannot be produced except by plaintiff's patented system and the plaintiff's claim (as claimed in Claim 1) is not for a method/system, however, the plaintiff has admitted that all his process claims in respect of the alleged invention were deleted when objections were raised by the plaintiff's invention by the Patent office during the prosecution as is evident from the plaintiff's cross examination dated 28th February, 2012 in CS(OS) no. 1035/2010 wherein he has admitted that the effect of deletion of process claims is that no exclusivity in respect of process for producing effects has been granted to him and the only exclusivity is restricted to the particular device. The plaintiff has also admitted to the contrary in his cross-examination dated 28th February, 2012 in CS(OS) No.1035/2010 at page No.2 (involving the suit patent), and has stated that prior to my invention, audio effects, vision effects and motion effects to indicate movements in synchronization with the movie were already existing but the effects of smell and sensation were not there.

40. With regard to the judgment cited by the plaintiff Strix Limited v. Maharaja Appliances Limited, 2010 Vol. 2, RAJ 145 (Del) in support of proposition that the onus of proof shifts to the defendant, it is stated that the same is wholly inapplicable to the facts of the present case, for in the above case of Strix Limited, the defendant had in fact admitted infringement and the only challenge was to the novelty and validity of the plaintiff's patent, on the ground of obviousness. It was in this context that the Court had observed that the onus to prove invalidity was on the defendant. It is submitted that to the complete contrary the defense of the defendant herein has been non-infringement and no such case of infringement has been ever admitted. The reliance of the aforesaid judgment is thus completely misplaced and the onus of proof in infringement proceedings never shifts from the plaintiff, with the limited exception of Section 104-A of the Act.

41. In the present case there is no material placed on record to show that the plaintiff has actually used the patented invention in India but also the plaintiff has made the statement that the product has been used and licensed to third parties and has made incorrect statement in Para 8 that the plaintiff has been receiving royalties in excess of 50 lacs for the same. There has been complete non-use of the patented invention by the plaintiff and the same is evident from the FORM 27 filed by the patentee himself before the Patent Office. The documents filed by the plaintiff in the month of March, 2011 do not prove any use of the invention in India. The said fact that the patented invention has not been used or licensed by the plaintiff to anyone in the world has in fact been admitted by the plaintiff in his cross-examination dated 27th February, 2012 in CS(OS) No. 1035/2010.

The Division Bench of this Court in Franz Xaver Huemer v. New Yash Engineers, AIR1997 Delhi 79 held that "a Plaintiff who has registered patent in India but has not used them in India can not in equity seek temporary injunction against the respondent".

42. The suit patent is being tested in the connected matter C.S (OS) No.1035/2010, involving the same suit patent where the plaintiff has been cross-examined. Plaintiff's evidence has been closed. Defendant in that suit has lead evidence and is being cross examined. Same facts and defense are involved in that suit also. It is therefore not necessary to discuss other various issues raised by both parties. From the material placed on record, it appears to the court that defendant No.2 has raised triable and crediable challenge to the patent which raises trial disputes. In case the said issues are decided on merit at the interim stage, it would definitely affect one of the parties.

43. In the present case, it appears to the Court that no prima facie case is made out by the plaintiff to grant injunction as prayed for. On the other hand, as alleged, defendant No.2 has been manufacturing and supplying equipments to various persons/companies, since 2003 and has made considerable investment for the same. The approximate sales of the defendants as on the date of filing of the present suit were Rs. 1.44 crores. An injury to the defendant no.2 would cause, if an injunction order is passed at this stage, the same would be far greater than the plaintiff whose device/product has not been commercially used so far. The balance of convenience is in favour of the defendants.

Thus in the interests of justice that the interim orders as prayed are not being passed for the reasons mentioned in earlier paras of my order. Rather the trial in the main case is expedited and the defendant No.2 is put to some terms to the defendants in order to strike balance between the parties at this stage. The said terms are:-

(i) The defendant No.2 shall furnish correct quarterly statement of account to this Court with regard to the business in relation to the device/apparatus already manufactured by them. The said statement of account shall be furnished positively by 15th May, 2014. The subsequent statement of each quarter shall be furnished within the next succeeding month.

(ii) The defendant No.2 shall file an undertaking by way of an affidavit to pay the damages, if at the final stage if the Court comes to the opinion that the defendant No.2 has actually infringed the patent of the plaintiff. The said undertaking would also be filed by 15th May, 2014.

(iii) The defendant No.2 shall deposit without prejudice a sum of rupees five lacs by way of security to be furnished by way of bank draft in the name of Registrar General of this Court in order to secure the interest of the plaintiff on or before 25th May, 2014 who shall invest the amount in FDR for the period of one year.

44. The application being IA No. 15260 of 2010 is disposed off accordingly. No costs.

CS(OS)1900/2010

45. Admission and denial has been done, the following issues are framed:

(i) Whether the theatre run by defendant No.1 employs the technology covered by the plaintiff's patent No. 231895 and infringes plaintiff's patent? OPP
(ii) Whether the counter claim filed by defendant No.2 is maintainable? OPP
(iii) Whether the suit patent is obvious and lacks inventive steps within the meaning of Patents Act, 1970? OPD
(iv) Whether the suit patent is liable to be revoked on the grounds stated in the counter claim? OPD
(v) Whether the plaintiff is entitled to damages or rendition of accounts?
(vi) Relief
46. The trial of the suit is expedited. The parties are granted four weeks time to file the list of witnesses. The plaintiff shall adduce the evidence by way of affidavit with six weeks from today. Mr. S.M. Chopra, retired ADJ, Delhi (Mobile No.9213230349) is appointed as Court Commissioner to record evidence of the parties.
47. List the matter before the Court Commissioner on 23rd July, 2014 for directions. His fee at the initial stage is fixed at ` 80,000/- which shall be shared by the parties in equal proportions.

(MANMOHAN SINGH) JUDGE MAY 09, 2014