On 7th July, 2005, Viraj Ltd. (Viraj) was granted a patent under the Indian Patent No. 195904, with a priority date of 16th July, 2002. The title of the patent application was "an improved internal combustion engine work

CS Professional · Intellectual Property Rights - Law and Practice · PYQS · June 2016
On 7th July, 2005, Viraj Ltd. (Viraj) was granted a patent under the Indian Patent No. 195904, with a priority date of 16th July, 2002. The title of the patent application was "an improved internal combustion engine working on four stroke principle." The invention was called DTS-i Technology and it related to the use of twin spark plugs located diametrically opposite to each other in a small displacement engine with the cylinder bore diameter ranging between 45 mm to 70 mm. According to Viraj, this placement of the spark plugs enabled a better control over the ignition timing and lesser time was taken for the flame to travel during the process of combustion. The novelty also lay in the use of a sleeve to protect the spark plug which prevented exposure of the plug to the lubricating oil. In 2003, Viraj launched 'Inventa', a motorcycle which employed the DTS-i Technology in respect of which the patent was then pending. In the first eight months of that financial year itself, Viraj manufactured and marketed 8,14,393 two wheelers with the DTS-i Technology out of a total of 15,01,241 two wheelers which were sold by it amounting to 54.25% of its total sales. In 2007, CVS Ltd. (CVS) announced the launch of a 125-cc motorcycle under the trademark 'Sport' which was to be powered by lean burn internal combustion engine of bore size 54.5 mm with a twin spark plug configuration just like that of Viraj. CVS also stated that on 1st and 3rd of September, 2007, Viraj had issued certain groundless threats to dissuade CVS from launching 'Sport'. Hence, in October, 2007, CVS filed a suit under sections 105 and 106 of the Patents Act, 1970 in the High Court, alleging that the statements made by Viraj on 1st and 3rd of September, 2007 constituted groundless threats, and sought the intervention of the Court to restrain Viraj from interfering with the launch of 'Sport'. Further, CVS also filed an application for the revocation of Viraj's patent before the Indian Patents Appellate Board under section 64 of the Patents Act, 1970. Upon the announcement by CVS, Viraj filed a suit for permanent injunction under section 108 of the Patents Act, 1970 in the High Court to restrain CVS from using the internal combustion technology patented by Viraj and from employing the same in marketing 2-3 wheelers, including CVS's proposed 125-cc 'Sport' motorcycle. Vide its order dated 16th February, 2008, the Single Judge of the High Court restrained CVS from launching the proposed 125-cc 'Sport' motorcycle with the twin spark plug engine technology, as Viraj prima facie enjoyed the right of exclusive usage of the patent, granted to it by the Patent Office. The High Court held that Viraj had succeeded in establishing a prima facie case for the grant of an injunction, and while granting the injunction was pleased to observe: ".... Suffice it to say now at this stage, prima facie there is novelty which means an invention and the same has been registered under the Patents Act... novelty has been on the face of it proved by the applicant by marketing the product to such a large extent and also without objection fairly for long ...." Aggrieved by the order of the Single Judge, CVS preferred an appeal before the Division Bench of the High Court. The Appellate Bench of the High Court held that Viraj had not succeeded in establishing a 'prima facie' case of infringement in respect of its patented twin spark technology. The Division Bench observed that having regard to the nature of operation of the DTS-i Technology engine by virtue of twin spark plugs and that of CVS by virtue of receipt of air fuel mixture through two different intake valves, their points of emphasis differed considerably, notwithstanding the use of twin spark plug in both the technologies. The Division Bench further observed that the operation of the invention as claimed by Viraj appears to be plug centric and that of CVS was valve centric, and on scrutiny of the claim as set out in the final complete specification, it held that it found it difficult to countenance Viraj's claim that the CVS's product specification infringed Viraj's patented right. Accordingly, the Division Bench set aside the order of the Single Judge. Aggrieved by the order of the Division Bench, Viraj preferred an appeal before the Supreme Court. The Supreme Court, while prima facie agreeing with the order of the Division Bench, ordered that although CVS shall be entitled to sell its motorcycle 'Sport', but it shall maintain an accurate record of its entire domestic and international sale and directed the High Court to appoint a receiver in this connection. In its interim order, the Supreme Court reiterated that in matters relating to trade marks, copyright and patents, the provisions of the Code of Civil Procedure, 1908 which mandate that civil disputes should be heard on a day-to-day basis without any adjournments, except in circumstances beyond the control of the parties. It also directed that the final judgment should be given normally within four months from the date of the filing of the suit. The Supreme Court directed that the timeline stipulated above be adhered to 'punctually and faithfully' by all courts and tribunals in the country. Explain the factors which constituted a prima facie case for the grant of an injunction.

Answer & Explanation:

For an invention to be patentable, it must satisfy the triple tests of novelty, non-obviousness, and capability of industrial application and exploitation. While considering the facts of case, the Court found that the invention satisfied the triple tests and was patentable. The Single Judge order of the High Court emphasised that in cases of interlocutory injunction, including any patent action the plaintiff must prove or show as follows: prima facie case that the patent is valid and infringed the balance of convenience lies in favour of plaintiff and irreparable loss would be caused to Plaintiff by not granting an order of injunction The factors which constitute a prima facie case for grant of an injunction are as follows: (a) Firstly, whether the applicant holds a patent over the technology under consideration. The certificate for grant of patent by the appropriate authority in such cases is a prima facie proof of the grant of a patent. (b) Secondly, whether there is a commercial use of the aforementioned patented technology by the respondent/non-applicant. In cases where there is a dispute between the parties as to whether the invention or technology claimed to be patented is patentable or not the tests applied by the courts are the test of novelty, non-obviousness, and capability of industrial application and exploitation of the technology. In the relevant case-law cited i.e. Bajaj Auto Limited v. TVS Motor Company Limited , while considering the facts of case, the Court found that the invention satisfied the triple tests and was patentable. The Court was of the view that, upon the amendment of the Act which came into force on 20th May 2003, when a patentee files a suit for infringement based on the patent granted to him, the patent should be prima facie presumed to be valid, until the same is revoked or set aside under any of the grounds set out in the Act or in any other manner. The Court was of the view that prior to the amendment, the patentee was conferred an exclusive right to use himself, or through agents or licensees and also to exercise or sell or distribute the inventions in India. However, after the amendment, the patentee now enjoys an exclusive right to prevent third parties from using or selling, or offering for sale etc his invention. On the question whether Bajaj's invention involved an inventive step, the Court was satisfied that the invention involved a technical advance as compared to the existing knowledge and that it had economic significance. The Court was prima facie satisfied that the invention had found a special place in the Indian market and had established a significant market share. The court found that even though Bajaj's product 'Pulsar' had been introduced in the market in 2003, TVS had for the first time raised an objection only on August 24, 2007, by which time Bajaj's DTS-i technology based product had been sold in large numbers across the country. The Single judge of the Madras High Court found that the petition for revocation of the Patent granted to Bajaj had been filed a mere six days prior to the launch of Flame, and as such the conduct of TVS was not entirely bona fide. The Court was of the view that till such time, TVS succeeded in its petition for revocation, the patent granted to Bajaj could not be viewed with suspicion, considering that it had been in existence for more than five years and as such the patentee Bajaj must be treated as actual user and the presumption of the validity of its patent was thus established. On the above basis, the Court recorded its satisfaction the Bajaj had succeeded in establishing a prima facie case for the grant of an injunction. The Court also recorded that having exploited the patent for five years, the patentee had a further period of fifteen years to exploit the patent, and hence the balance of convenience was also in its favor. Accordingly, the Madras High Court granted an interlocutory injunction in favour of Bajaj.

Topics: Patent Law

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