Positive Ruling for Godrej by Bombay High Court

In a writ petition by Godrej and Boyce Manufacturing Company vs. The Deputy Controller of Patents and Designs, the High Court of Bombay held that the decision of the Patent office to remove Godrej’s patent from the registered of patent was hyper technical and extreme.

The Court ruled that it would be accepted by the Patent Office that the Petitioner had indeed paid the renewal fees and thus the patent cannot be removed from the Register of Patents and no coercive action can be taken in relation thereto. The Court held that the Petitioner can proceed on the footing that their patent is registered and can assert their rights based on said registration.

The Court further went on to question the Patent Office and disputed their non-acceptance of renewable fees for the registered patent of the petitioners for the year of 2007, especially when they had been accepted for prior years and even for the years subsequent to 2007.

AD-INTERIM RELIEF TO SERGI: ALLOWED TO MANUFACTURE AND DEAL IN TRANSFORMERS

In the patent battle raging between Sergi India and CTR in the Bombay High Court, a Division Bench order provides some respite for the former and allowed Sergi to continue manufacture and deal in transformers.

Sergi had appealed the injunction reinstated against it by a Single Judge bench on the 23rd day of October, 2015. The Division Bench order stayed the order of the single judge in view of the judgement of the Apex court in the Case of Dr. Aloys Wobben & anr. v/s Yogesh Mehra & ors [2014 SCC Online SC 482] which states, “only the culmination of procedure contemplated under Section 25(2) of the Patents Act, bestows the final approval of the patent. Therefore, it is unlikely and quite impossible, that an “infringement suit” would be filed, while the proceedings under Section 25(2) are pending, or within a year of the date of publication of the grant of a patent.” 

Hence, the bench ordered the Controller General of Patents to expeditiously dispose off the post-grant proceedings initiated under Section 25 (2) of the Patents Act , 1970 by Sergi India.

GENERAL PRINCIPLES OF PATENT INFRINGEMENT RE-ESTABLISHED BY BOMBAY HIGH COURT

In a recent order of Bombay high Court in CTR Manufacturing Industries Limited vs Sergi Transformer Explosion Prevention Technologies Pvt. Ltd, Hon’ble Justice G. S. Patel re-established the general principles of a patent infringement as follows:

Claim Construction

 In a combination patent, the invention cannot be a mere arrangement or rearrangement of previously known integers all functioning independently in a known way. These integers, though all themselves previously known, may be combined in a previously unknown way, acting inter-dependently, each of them essential, to produce a new and improved result. Each of the integers must be essential. If indeed any one of the integers can be taken out without affecting the final result, it is not essential.

Additionally, if a patent claim is overbroad by including every single non-essential and essential addition, then the patent may be prima facie invalid for want of novelty. No person can claim such a monopoly as would result in a bar to future improvements. If the patent is, on the other hand, so narrow that it excludes the addition of another essential integer, then there is no infringement.

Further, where a patent has been granted on the patentee disclaiming a particular integer, i.e., by saying it is not essential to his product, then the addition of that nonessential integer does not, per se, defeat the claim for infringement. It must be shown that the additional integer is essential, required and returns a result that is as or more efficient than that produced by the patent. Adding something superfluous to the essential integers does not defeat an infringement claim. It must be shown that what is added is also essential and that it satisfies the previous tests of interdependency, producing as good a result or a new and improved result. The patent must be read in a purposive manner to determine what constitutes its ‘pith and marrow’.

Validity

 At an interim stage, a Court is not required to examine the validity of a patent so much as its vulnerability; and this is to be tested not on a mere say-so, but with the aid of cogent and persuasive technical and scientific material, including reliable expert opinions and other data.

Further, the fact that a patent has been granted is not wholly immaterial at an interim stage. While the grant is not a complete answer to a charge of prima facie invalidity or vulnerability, it is still a factor to be considered and given appropriate weight.

The speed of grant of a patent is wholly irrelevant, particularly if it is made without a substantiated (and substantial) case on illegality and malafide intentions.