There were two suits in this case. One was by the plaintiff Bajaj Auto Limited
which filed a suit under Section 108 of the Patents Act, 1970 for the relief of
permanent injunction in respect of the plaintiff's patent and/or from using the
technology/invention described in the said patent and/or manufacturing,
marketing, selling, offering for sale or exporting 2/3 wheelers, including the
proposed 125-CC FLAME motorcycle containing an internal combustion engine or any
internal combustion engine or product which infringes the plaintiff's patent
claiming of damages for infringement of patent etc. Pending the said suit, the
plaintiff prayed for an order of temporary injunction restraining the respondent
from in any manner infringing the applicant's patent.
Plaintiff in another suit, TVS Motor Company filed the suit on the basis of
groundless threat of infringement under Section 106 of the Patents Act, for
declaring that the threats held out by the defendant that the plaintiff is
infringing the defendant's patent and that the defendant is proposing to take
infringement action against the plaintiff are unjustified and also for permanent
injunction restraining the defendant from continuing the issuance of threats and
thereby interfering with the launch and sale of product TVS Flame apart from
directing the defendant to compensate the plaintiff by way of damages sustained
on account of the unjustified threats made by the plaintiff. Pending the said
suit, the plaintiff filed for an order of interim injunction restraining the
respondent from interfering with the manufacture and marketing of applicant's
Except the use of three valves, the product which was attempted to be marketed
by the respondent was prima facie similar to the applicant's patented product.
- Whether the Defendants infringed the patent or combination even though
it made some improvements to the main patented article?
- Whether the patent of the applicant was valid and still subsisting?
- Whether there were similarities in the design of TVS flame with the
patent of Bajaj motors?
- Whether the grant of the injunction was necessary to protect the rights
of the applicant under the statutory provision
- Whether the respondents were unjustly threatened only for the purpose of
obtaining an unjust monopoly over the market?
- Technology been used was a prior art as it had been previously used in a
US Honda Patent and so the patent must not have been granted in the first
- The applicants claim is for two spark plugs with two valves; the
respondents design includes two spark plugs with three valves for which they
held a license.
- The applicant's invention is not new and novel as held under norms of Bishwanth Prasad Radhey Shyam v. H.M. Industries.
- That the validity of a patent can be challenged.
- The technology patented is a new invention.
- That the technology falls under strata of inventive step.
- The prior art as contended by the appellant not applicable and thus
injunction be sustained.
- On the balance of convenience, the learned senior counsel contended that
the Respondent's product came into the market three years prior to the
Appellant's product and that it had already achieved commercial success.
The court held that if the exact technological combination as patented was used
by TVS then it could have led to infringement but there were improvements that
were made and that instead of two, three valves were used and thus this wasn't
infringement, the court further held that if there is a slightest variance and
modification in the technology used and if there are different combinations used
to achieve the same result then it is not infringement.
The court relied on the case of improver corporation and ors. V. Remington
Consumer Products and Ors
to reach to the conclusion.
The court also widened the scope of infringement of trademark, patent and
copyright. Court observed that the matters of intellectual property rights hold
important aspects and thus speedy disposal should be made. It further gave
guidelines to the lower courts that the matters relating to intellectual
property shall be heard on day to day basis and should be resolved within two to
three months. Court further passed direction that all tribunals and lower courts
have ton strictly and punctually comply with this direction.
The court gave the ratio decidendi that if the different combinations and
process is done differently than the patented procedure even then it is not an
infringement and can be held as an inventive step. If different combinations are
used for the same result then no infringement.
The proper approach to the
interpretation of patents registered under the Patents Act 1949 was explained by
Lord Diplock in Catnic Components Ltd. v. Hill & Smith Ltd
language should be given a purposive
and not necessarily a literal construction.
If the issue
was whether a feature embodied in an alleged infringement which fell outside the
primary, literal or a contextual meaning of a descriptive word or phrase in the
claim (a variant) was nevertheless within its language as properly
interpreted, the court should ask itself the following three questions:
The Court subsequently in para 54 observed that:
- Does the variant have a material effect upon the way the invention
works? If yes;, the variant is outside the claim. If no –
- Would this (i.e. that the variant had no material effect) have been
obvious at the date of publication of the patent- to a reader skilled in the
art. If no, the variant is outside the claim. If yes –
- Would the reader skilled in the art nevertheless have understood from
the language of the claim that the patentee intended that strict compliance
with the primary meaning was an essential requirement of the invention. If
yes, the variant is outside the claim.
It is also clear as per the decisions, for the purpose of deciding the novel
features to constitute pith and marrow
a purposive construction has to be
given in order to make it essential requirement of the invention that any
variant would follow outside the monopoly even if it could not have material
effect upon the working of invention.
The the court in paragraph 69 emerged following principles:
- The validity of a patent can be challenged in a suit on various grounds
of revocation as set out under Sections 64 and 107 of the Patents Act.
- For the grant of interim injunction in a patent matter, the prima facie
validity of the patent should be shown and also the prima facie infringement
should be proved apart from the availability of balance of convenience and
- If the patent is a new one, the mere challenge at the Bar would be quite
sufficient for the refusal of an interim injunction as compared to a fairly
- Even in IPR cases, apart from prima facie case, the balance of convenience
and irreparable injury, the mere registration of the patent alone would not be
sufficient and the Court must look at the whole case i.e. the strength of the
case of the plaintiff and the strength of the defendant.
- Irrespective of the examination and investigation made under Sections 12
and 13 of the Patents Act, no presumption can be drawn as to the validity of
the patent and whether the application for revocation of the patent is
pending and when serious controversy exists as regards the existence of an
invention based on prior art, the Court should be slow in granting the
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