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Bombay High Court

Patent Year Book 2023-2024

  • Infringement action: Scope of patent right cannot be expanded, and where a patent com- prises prior art elements in a particular se- quence, then pith and marrow of the invention is the specific sequence of which there can be no infringement merely by use of the prior art elements in some other manner.
    In Tri- Parulex Fire Protection System v. CTR Manufacturing Industries Private Ltd, 2023 SCC OnLine Bom 903, dated 25th April, 2023, a Divi- sion Bench was dealing with an appeal from an interim injunction granted by the Single Judge. Both the Appellant and the Respondent held a patent in their name for the system and meth- od for preventing, protecting and/or detecting fire and explosion of electrical transformers. The difference was Respondent’s patent included use of a differential relay. Respondent had filed the suit post losing a tender by Adani Electricity Mumbai Limited.
  • The bench, inter-alia, observed that the relief of interim injunction is wholly equitable in na- ture and the party invoking the jurisdiction must show that it was at no fault or responsible for bringing about the state of things complained of.

    The appeal bench while allowing the appeal held that,

    • By way of the impugned order, the Single Judge granted a right to the Respondent much beyond what was granted by the patent.
    • Respondent’s own case was that its patent consisted of a system which is generated in three systems- differential relay, Buch- holz relay and circuit breaker, in a specific The specific sequence is the pith and marrow of the Respondent’s patent.
    • However, the Ld. Single Judge held that the moment the Appellant uses the dif- ferential relay as one of the components, it infringes Respondent’s This is an error apparent on face of record.
    • The patent did not grant a monopoly on use of the three integers (differential relay, Buch- holz relay and circuit breaker). Further, the documents on record clearly showed that these integers were a matter of prior art.
    • The finding that use of the three integers in any combination even if different from the re- spondent’s patent would amount to infringe- ment is ex-facie erroneous.
    • The non-mention of differential relay in Appellant’s patent and the actual use thereof does not and cannot amount to infringe- ment of respondent’s patent. The infringe- ment would happen if the 3 integers are in the sequence as of the Respondent’s patent.
    • The Single Judge erred in convert- ing the respondent’s patent into a prod- uct patent from  a  process patent.
    • Inconsistent stand in plaint disentitles Plain- tiff from interim relief: Respondent had stat- ed in the written submissions that it is not es- sential for differential relay and Buchholz relay to work in a sequence to activate, this being contrary to stands taken in the Plaint. Such conduct disentitles one from interim relief.
    • One of the documents- a technical draw- ing allegedly submitted  by  Appellant to Adani (for tender bid) and submit- ted by the Respondent was prima facie held to be of questionable authenticity.
    • Balance of Convenience: By the injunction, the appellant was prevented from carrying on business of manufacturing and could not even execute orders that it had from BHEL exposing the appellant to Appel- lant won’t be able to bid for any projects ex- cepts those where its patent is used and such projects may not be available. Even existing orders were cancelled. Balance of Conve- nience was clearly in favour of the appellant and in denial of injunction.
  • Unreasoned order of Patent Office set aside.
    In Amogreentech Co. Ltd. v. Assistant Controller of Patents & Designs, 20-COMMP-1247-22, dat- ed 26 June 2023, Ld. Single Judge while setting aside the patent application rejection order and remanding the matter for de novo consideration noted that,
    • For determination of inventive step, the in- vention should be considered as a whole.
    • Unreasoned order: There is a lack of analysis in the impugned order as to how the prior arts are comparable with Claim 1 of the ap- plication. Controller ought to have passed a speaking order and demonstrate indepen- dent application of mind.
Patent Yearbook Editorial team:

Ms. Sneha Jain, Dr. Victor Vaibhav Tandon, Ms. N. Parvati, Mr. Ayush Saxena

Disclaimer: This Yearbook is for informational purposes. It does not in any manner amount to legal advice. It is not intended for advertising or soliciting.



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