JAYASIMHA BABU, J.

1. These appeals are against the interim order of injunction granted by the learned Single Judge restraining the defendant in the suit, who is the appellant before us, from infringing the patent, design and the copy right of the plaintiffs, who are the respondents before us with respect to a wet grinder. Second plaintiff in the suit obtained patent 179607 dated 9th May, 1991 which was sealed on 3rd April, 1998 in respect of the wet grinder, details of which we shall presently advert to. That plaintiffs also obtained registration of design for wet grinder in registration Nos. 163445 and 163440 dated 25th July, 1991. Second plaintiff also claims a copy right in the instruction manual, which was published by it, for use by the persons buying its wet grinders. The wet grinders are sold under the brand name 'ultra'. The plaintiff claim to be the first manufacturers of such wet grinders which are described as 'table top wet grinders'. Plaintiffs had issued caution notices in the years 1993 and 1995 cautioning the public against anyone else claiming any right to manufacture that product, for which, an application for sealing of a patent was then pending, and also infringing the design for registration of which also, an application was then pending. The plaintiffs had, by the time the suit came to be instituted, manufactured 2, 48, 155 wet grinders, and marketed the same. The quantity sold during the years subsequent to 1996 being in excess of 40, 000 units each year. The value of the 38, 182 wet grinders sold from 1st April, 1999 to 29th February, 2000 is said to be Rs. 16.68 crore of the three plaintiffs, the first is the inventor, the second, assignee manufacturer in whose name patent was obtained, and the third the licensee which markets the product.

2. It is the case of plaintiffs that in the month of March 1999, they came to know about the manufacture by the defendant in the suit, of a wet grinder, which according to the plaintiffs was identical to that manufactured by the plaintiffs, and with a design, which again according to the plaintiffs, was a blatant imitation of their design, and it was also accompanied by an user's manual, which also according to the plaintiffs was a total imitation of the plaintiffs' manual. The plaintiffs thereafter instituted the suit in April 1999. Learned Single Judge, after receiving the affidavits filled by the defendant in answer to the applications filed with the plaintiffs' for injunctions, granted the injunction sought for on 29th February, 2000, and also allowed a period of one month from that date for the defendant to dispose of the units which had been manufactured earlier. According to the defendant, it had manufactured in the period subsequent to 1st April, 1999, 19, 880 units and had sold 17, 604 of those units. The units so sold are said to be of the value of Rs. 7.75 crore inclusive of the excise duty and sales tax. The gross profit made by it on the units so sold is said to be 1.09 crore and the net profit there from Rs. 30.46 lakh. The certificate issued by its auditor shows that the net profit estimated by the defendant from the sale of the table top wet grinder sold by it under its brand name 'Butterfly' was 5 per cent. The value of the units manufactured by the defendant from 1st April, 1999 to 9th March, 2000 exclusive of excise duty and sales tax was Rs. 5.96 crore.

3. The defendant has also applied for patent of its product, which is also a 'table top wet grinder'. Its application is in application No. 2865 dated 28th December 1998. The design of the defendant's table top wet grinder has also been registered in registration Nos. 178911 and 178962 dated 3rd March and 10th March, 1999 respectively. Beside obtaining such registration of its design and applying for patent for its product, the defendant has also applied for revoking the patent that has been granted to the plaintiff's in OP No. 902 of 1999 on 16th December, 1999, which is pending in this court.

4. The table top wet grinders were first put in the market by the plaintiffs. Plaintiff's claim that they were the first to do so is not in dispute. The product made by the plaintiffs is a wet grinder comprising rotatable drum encompassing a base stone, and driven as a prime mover and two or more truncated, conical or elliptical rolling stones mounted rotatably with their axes falling within the area of the base stone and with their bases away from the centre of the base stone. The contacting surfaces of the base stone and rolling stones match each other. Half of the included angle of each rolling stone is substantially equal to the angle between the plane of the base stone and the axis of the rolling stone. The rolling stones are maintained at a predetermined pressure against the base stone so as to prevent the rolling stones being carried away by the rotating base stone by permitting the rolling stones to rotate around the axes and roll over the base stones. The truncated conical stones are attached to a central vertical shaft within which the spring which exerts pressure on those stones is located, the shaft being held in place by the outer cover. The shaft with the conical stones is detachable.

5. The claims made by in its patent application filed by 1st plaintiff, which was later assigned to second plaintiff for this wet grinder were as under :

"(i) A grinder comprising a rotatable drum encompassing a base stone and driven as a prime mover, two or more truncated conical or truncated elliptical rolling stones rotatably mounted on pin members with rolling stone axes falling within the area of the base stone and their bases away from the centre of the base stone, each rolling stone being co-axially mounted on its pin member, the contacting surfaces of base stone and each rolling stone being matching each other and the speed at any point on each rolling stone being substantially equal to the speed at the corresponding point on the base stone in contact therewith, the rolling stones being carried away by the rotating base stone while permitting the rolling stones to rotate around their axes and roll over the base stone.(ii) A grinder as claimed in claim 1, wherein said base stone is tapered towards the centre thereof.

(iii) A grinder as claimed in claim 1, wherein said base stone is tapered towards the centre thereof.

(iv) A grinder as claimed in any of the preceding claims 1 to 4, wherein said axes of the rolling stone falls on or near the centre of rotation of the base stone.

(v) A grinder as claimed in claim 2, wherein there are two conical stones mounted within the drum diametrically opposite to each other at a distance away from the axes of the drum with their grinding surface in contact with base stone.

(vi) A grinder as claimed in any of the preceding claims, wherein said drum is detachably mounted on the drive means.

(vii) A grinder as claimed in any of the preceding claims, wherein the rolling stones are mounted on a centrally located spring loaded holder assembly provided with a locking arrangement.

(viii) A grinder as claimed in claim 8, wherein said holder assembly is detachably mounted on the base stone.

(ix) A grinder substantially as herein described and illustrated with reference to the accompanying drawing."

6. The defendant, in its counter-affidavit contended that the claims so made by the plaintiffs for the wet grinder for which it had obtained the patent were wholly lacking in novelty, were merely workshop improvements over the pre-existing knowledge concerning wet grinders, and that they were also not patentable on account of their obviousness. All the devices used in the wet grinder, according to the defendant, were well-known, and there was no inventive step involved in the device or apparatus manufactured by the plaintiffs, which at best could only be regarded as a new application for devices and apparatus which were otherwise well-known. It was the case of the defendant that even in the specification filed by the plaintiffs, it was clearly admitted that wet grinders by themselves are not new products, that wet grinders were well-known even before the patent application of the plaintiffs was filed, that such wet grinders did comprise of rotatable drums with a base stone meant for aiding the grinding and the rollers placed thereon which were also meant to achieve the object of grinding the foods products which were required to be ground. The defendant, however, does not dispute the fact that wet grinders of the type which are described as table top wet grinders' had not been manufactured by anyone until they were first put on the market by the plaintiffs. Though the defendant is itself engaged in the manufacture of domestic appliances of various kinds, the defendant also had not manufactured wet grinders of the type manufactured by the plaintiffs till it came out with such wet grinders, which the plaintiffs have alleged to be mere imitations of its wet grinders in March 1999.

7. It was also the case of the defendant that the two products are not identical, as the defendant's product has in addition to the two conical rollers found in the plaintiff's products has a third supplemental conical roller and that provides for additional grinding by making the material to be ground pass between the supplemental conical stone and the two other conical stones which are to rest on the base stone. The application filed by the defendant for patent is in fact in respect of the device, along with the rotatable drum with the base stone being the bottom of that drum.

8. The defendant pleaded that "each and every particular" mentioned by the plaintiffs in its plaint as being special to its wet grinder were in fact,

"known to the art and that there is no inventive feature of any sort therein."

9. In order to better appreciate and understand the rival submissions made by the parties, it is useful to set out the pictorial depiction of the products manufactured by the two parties. The photograph of the product of the plaintiffs is the one marked 'A'. The photograph of its interior which also contains the two conical rollers is 'B'. The two truncated conical rollers attached to a central shaft within which is located the spring, and which is the device used in the plaintiffs product is 'C'. The defendant's product is 'D'. The interior of the drum which contains also the two conical rollers similar to those used by the plaintiffs with the supplemental roller which has been added by the defendant is 'E'. The three conical rollers used by the defendant in its product is 'F'. A photograph showing the two rollers used inside the drum in the plaintiffs product and of the three rollers in the defendant product is 'G'.

10. The prior state of the art, about which there is no dispute at all, is also relevant for deciding the questions which require our consideration here. The photographs of two such prior devices are marked as 'H' and 'I' respectively.

11. The defendant has produced a specification 154095 for the patent granted to Combustion Engineering incorporated USA that specification having been filed with the patent office at Calcutta on 1st April, 1980, which contains the drawing of a significant of a bowl mill for effecting the pulverisation of coal. In that drawing is shown a conical roller with a shaft attached thereto. The defendant relies on that specification to contend that the use of conical rollers with shaft attached thereto was well-known in the field, and that the plaintiffs cannot be credited with any ingenuity or skill in having adopted truncated conical roller with a shaft for use in the wet grinder manufactured by it. ...

12. It is necessary at this stage to refer in some detail to that specification filed by the Combustion Engineering. In that specification, while referring to the background of the invention, it has been stated that :

"it has long been known in the prior art, to provide apparatus employable for purposes of effecting the grinding of materials. More specifically, the prior art is replete with examples of various types of apparatus that have been used heretofore to effect that grinding of a multiplicity of different kinds of materials. In this regard, in many instances discernible differences of a structural nature can be found to exist between individual ones of the aforesaid apparatus. The existence of such differences is, in turn, attributable for the most part to the diverse functional requirements that are associated with the individual applications in which such apparatus are designed to be employed. For instance, in the selection of the particular type of apparatus that is to be utilised for a specific application, one of the principal factors to which consideration must be given is that of the nature of the material that is to be ground in the apparatus."

13. The apparatus in respect of which that specification 154095 was filed was one for grinding of coal. The claim made in the patent application was for the improved air deflector, which was particularly suited to be utilised for effecting the pulverisation of coal.

14. That patent application also referred to the prior art in respect of which patents had been granted. The bowl mill was described, thus

"bowl mill essentially consists of a body portion in which a grinding table is mounted for rotation a plurality of grinding rollers that co-act with the grinding table to effect the grinding of coal interposed there between .....".

15. It is the case of the defendant that there is no inventive step involved in the plaintiffs wet grinder and the patent though granted to the plaintiffs by the patent office, is in fact invalid. While considering this arguments, it is necessary to refer to certain provisions of the Patent Act, 1970 ('the Act'). Section 2(j) of the Act defines invention. The definition so given in the Act reads thus :

'(J) "invention" means any new and useful -

(i) art, process, method or manner of manufacture;

(ii) machine, apparatus, or other article;

(iii) substance produced by manufacture, and includes any new and useful improvement of any of them, and an alleged invention;'

16. Section 64 of the Act deals with revocation of patents. Section 64(1)(e) and (f) of the Act have been relied upon by the defendant/appellant, and those clauses are set out below :

'Revocation of patents. - (1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may on the petition of any person interested or the Central Government or on a counter-claim in a suit for infringement of the patent, be revoked by the High Court on any of the following grounds, that is to say, -(a) to (d) * * *

(e) that the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known or publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the documents referred to in section 13 :

Provided that in relation to patents granted under the Indian Patents and Designs Act, 1911 (2 of 1911), this clause shall have effect as if the words "or elsewhere" had been omitted;

(f) that the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim :

Provided that in relation to patents granted under the Indian Patents and Designs Act, 1911 (2 of 1911), this clause shall have effect as if the words "or elsewhere" has been omitted;'

Patents are, therefore, granted for things that are invented, and which have use and which fall within one or the other clauses of section 2(j). The definition of 'invention' in section 2(j) encompasses not only things that are new, but also things which are an improvement on what was known earlier, so long as such improvement is new and useful. It is, therefore, not essential that the entire apparatus in respect of which patent is claimed, should have been the invention of the person who claims a patent therefor. So long as such apparatus is an improvement on what is known earlier, and such improvement is not something which was obvious or a mere workshop improvement, and has qualities of being new and useful, such improvement would also be entitled to a patent.

17. The grant of a patent under the provisions of the Act does not by itself guarantee the validity of the patent. Section 13(4) of the Act provides that

"the examination and investigations required under section 12 and this section shall not be deemed in any way to warrant the validity to any patent, and no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any such examination or investigation or any report or other proceeding consequent thereon".

18. The Supreme Court in the case of Bishwanath Prasad v. Hindustan Metal Industries, considered the object of the Act, and the extent to which a patent granted under the provisions of the Act can be presumed to be valid. The court held :

"The object of patent law is to encourage scientific research, new technology and industrial progress. Grant of exclusive privilege to own, use or sell the method or the product patented for a limited period, stimulates new inventions of commercial utility. The price of the grant of the monopoly is the disclosure of the invention at the patent office, which, after the expiry of the fixed period of the monopoly, passes into the public domain.

The fundamental principle of patent law is that a patent is granted only for an invention which must be new and useful. That is to stay, it must have novelty and utility. It is essential for the validity of a patent that it must be the inventor's own discovery as opposed to mere verification of what was already, known before the date of the patent.

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 v. Thierry 1996 14 Pat. Ca. 105, that the purpose is new or that there is novelty in the application, so that the article produced is in 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 LJ. put it in Blackey v. Lathem 1888 6 Pat. Ca. 184 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 "invention" over what is old. Determination of this question, which in reality is a crucial test, has been one of the most difficult aspects of patent law, and has led to considerable conflict of judicial opinion. ....The expression "does not involve any inventive step" used in section 26(1)(e) of the Act and its equivalent word "obvious", have acquired special significance in the terminology of patent law. The obviousness has to strictly and objectively judged. For this determination several forms of the question have been suggested. The one suggested by Salmon, LJ., in Rado v. John Tye & Son Ltd. 1967 RPC 297 is apposite. It is :

"whether the alleged discovery lies so much out of the track of what was known before as not naturally to suggest itself to a person thinking on the subject; it must not be the obvious or natural suggestion of what was previously known."

Another test of whether a document is a publication which would negative existence of novelty or any preventive step is suggested, is as under : Had the document been placed in the hands of a competent draftsman (or engineer as distinguished from a mere artisan), endowed with the common general knowledge at the priority date, who was faced with the problem solved by the patentee but without knowledge of the patented invention, would he have said, "this gives me what I want "(Encyclopedia Britannica ibid). To put it in another form :

"Was it for practical purposes obvious to a skilled worker, in the field concerned, in the State of knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the invention the subject of the claim concerned "

- Halsbury, 3rd edn., vol. 29, p. 42 referred to by Vimadalai, J. of Bombay High Court in Farbwerke Hoechest & B. Corporation v. Unicham Laboratories, 1969 AIR(Bom) 255".'

19. The fact that a patent has been granted by the patent office does not by itself establish its validity or even by itself satisfy wholly the test of a prima facie case for the purpose of grant of injunction. The Apex Court in the case of Bishwanath Prasad (supra) referred to above at paragraph 32 on this aspect observed as under :"

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 a presumption in favour of the validity of the patent cannot be accepted.

"The prior law in England on this aspect of the presumption of the validity of the patent, as set out in the case of Smith v. Grigg Ltd. 41 RPC 149 by Lord Justice Atkin who along with Scrutton, LJ decided that case and who observed that,

'I think the reason for the principle which has been adopted in respect of a person claiming an interlocutory injunction restraining the infringement of a patent, is, that the plaintiff has always to establish at any rate a prima facie case of having a right which has been infringed by the defendant, and according to our patent law, which in this respect I think differs from that of some other countries, 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 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 a patent, and the defendant has infringed it," say where the patent is of 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 in fact a valid patent, then the court refuses to grant an injunction.',has changed as can be seen from the observations of the House of Lords in the case of American Cyanamid Co. v. Ethicon Ltd. 1975 All(ER) 504at 508. Lord Diplock, referring to the judgment of Smith (supra) made the following observations :"

Relics of this reluctance to enforce a monopoly that was challenged, even though the alleged grounds of invalidity were weak, are to be found in the judgment of Scrutton, LJ as late as 1924 in Smith v. Grigg Ltd. 1924 KB 655 at p. 658, but the elaborate procedure for the examination of patent specifications by expert examiners before a patent is granted, the opportunity for opposition at that stage, and the provisions for appeal to the patent appeal tribunal in the person of a patent judge of the High Court, make the grant of a patent now-a-days of good prima facie reason, in the true sense of that term, for supposing the patent to be valid, and have rendered obsolete the former rule of practice as respects interlocutory injunctions in infringement actions. In my view the grant of interlocutory injunctions in actions for infringement of patents is governed by the same principles as in other actions.

"Though the grant of a patent by itself does not guarantee its validity, the fact that a patent has been granted must be given some weight and significance while considering the question of prima facie case. The plaintiffs are entitled to place reliance on the fact that they have already secured patent. The grant of the patent does not on the basis of such grant, make the patent impregnable. The burden is always on a plaintiff to establish its case prima facie before it can claim any interlocutory relief. It is always open to the defendant to question the validity of patent. When the defendant is able to point out some grounds for regarding the patent already granted, as being prima facie invalid then at the interlocutory stage, this factor of patent having been granted to the plaintiff would cease to be of significance while considering the question of prima facie case. The burden of proof on the plaintiffs at the interlocutory stage, therefore, is not so rigorous, as it would otherwise be, if no patent had been granted in the first place.Though some of the High Courts in India have referred to and relied on the case of Smith (supra), we must, having regard to the development of the law in England where that case is no longer regarded as having laid down a right principle with regard to the value to be attached to the patent already granted to a plaintiff, hold that the grant of patent is indeed a factor to be taken note of while considering the plaintiffs' right to an interlocutory injunction.

While dealing with the case of American Cyanamid (supra), it is also necessary to notice the factual backdrop in which that case was considered by the House of Lords, as those facts have some similarity to the facts of the present case. The patent that had been claimed in the case of American Cyanamid (supra), was not for a product which was in its entirety a new invention. The patent that was claimed there was for artificial absorbable surgical sutures - the sutures being made of filaments made of a particular kind of chain polymer known as a polyhydroxyacetic ester, (PHAE). As noticed in the judgment"

neither the substance PHAE nor the method of making it into filaments was new at the priority date. Processes for manufacturing filaments from PHAE had been the subject of two earlier United States Patents in 1953 (Lowe) and 1954 (Higgins). The invention claimed by Cyanamid, thus, consisted of the discovery of a new use for a known substance.

"The court upheld the claim of American Cyanamid that its patent was one which was worthy of protection, that it has established a prima facie case for grant of temporary injunction, and it restrained its rival Ethicon, which had introduced a similar product, also involving the same polymer, manufactured and marketing the product made by the defendant.

Another aspect of that case which needs to be noticed is that, while granting the injunction in favour of American Cyanamid, one of the factors noticed and regarded as relevant by the court was that if injunction was not granted, American Cyanamid even though ultimately successful in proving infringement, would have lost its chance of continuing to increase its share in the total market in absorbable surgical sutures, which the continuation of an uninterrupted monopoly of PHAE sutures would have gained for it by the time of the expiry of the patent in 1980. That statement was made while considering the extent of hardship that was likely to be caused to one or the other parties for the grant of injunction and considering the possibility of the plaintiffs being able to prove the infringement ultimately at the trial.Learned counsel for the appellants relied on the case of H.E. Curtis I Son Ltd. v. R.H. Heward & Co. 40 RPC 53. It was therein held by the Patent Judge of the Chancery Division, that the alleged invention therein which was for improvements, in or relation to abdominal supports for medical or surgical purposes, was only a natural and ordinary workshop improvement, and development of a well-known apparatus having regard to the requirements made known to the patentee by the surgeon upon, whose suggestion he had acted, rather than an invention within the recognised principles of the patent law. Counsel also relied on the decision of the court of Appeal in the case of Williams v. Nye 7 RPC 62, wherein, it was held that the patent that was claimed therein for improved mincing machine was in effect a combination of old things in the simplest possible manner, and that there was no sufficient invention and, therefore, the patent was invalid.

Counsel for the appellants also referred to the case of Vidal Dyes Syndicate Ltd. v. Levinstein Ltd., 29 RPC 245, wherein patent had been granted for improvements in colouring matters. The court held that there was not common knowledge as to the effect of heating the bodies mentioned in the specification with sulphur, either alone or in the presence of sulphate of sodium; that, as to the dismidonaphthols, the specification was insufficient; that, as to the dinitronaphthols, the specification, in stating that it would be useful to reduce before treatment with sulphur, erroneously implied that the dye could be formed without previous reduction, and the directions given were insufficient; and that the patent was invalid. The court also held that the defendants' dye was a different substance from the plaintiffs', and was not produced by the process claimed. That case was relied on by counsel to contend that one of the claims made by the plaintiffs was not an accurate claim, and on that ground alone, patent should be regarded as invalid.Learned counsel for the plaintiffs submitted that oven on the assumption that all the parts of the apparatus and the principles on which they operate were known, nevertheless, the product manufactured by the plaintiffs was an improvement over the pre-existing stage of the art and there was ingenuity and skill displayed by the plaintiffs in making such improvement. It was submitted that the improvement so made were clearly not workshop improvement, and also could not possibly be regarded as obvious. Counsel in this context referred to this observation of Lord Westbury, LC in Hills v. Evans 1860 (31) LJ(Ch) 457 :"

The antecedent statement must, in order to invalidate the subsequent patent, be such that a person of ordinary knowledge of the subject would at once perceive and understand and be able practically to apply the discovery without the necessity of making further experiments ... the information ... given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent.

"Counsel also relied on the observations of Lord Russel in the case of Non-Drip Measure Co. Ltd. v. Strangers Ltd. 1943 60 RPC 142 :

'Whether there has or has not been an inventive step in constructing a device for giving effect to an idea which when given effect to, seems a simple idea which ought to or might have occurred to anyone, is often a matter of dispute. More especially is this the case when many integers of the new device are already known. Nothing is easier than to say, after the event, that the thing was obvious and involved no invention. The words of Moulton, LJ in British Westinghouse v. Braulik 1910 27 RPC 209 at p. 230, may well be called to mind in this connection : I confess (he said) that I view with suspicion arguments to the effect that a new combination, bringing with it new and important consequences in the shape of practical machines, is not an invention, because, when it has once been established, it is easy to show how it might be arrived at by starting from something known, and taking a series of apparently easy steps. This epso facto analysis of invention is unfair to the inventors and, in my opinion, it is not countenanced by English patent law. .... It is always pertinent to ask, as to the article which is alleged to have been a mere workshop improvement, and to have involved no inventive step, has it been a commercial success Has it supplied a want Some language used by Tomlin J. in Samuel Parkes and Co. v. Cooker Bros. Ltd. 1929 46 RPC 241 at 248 may be cited as apposite :"

Nobody, however, has told me, and I do not suppose that anybody ever will tell me, what is the precise characteristic or quality, the presence of which distinguishes invention from workshop improvement. ..... The truth is that when once it has been found .... that the problem has awaited solution for many years and that the device is in fact novel and superior to what had gone before and has been widely used in preference to alternative devices, it is, I think, practically impossible to say that there is not present that scintilla of invention necessary to support the patent.'Counsel also invited our attention to the observation of Greene LJ in Wood v. Gowshall 1937 54 RPC 37 at p. 40, thus :

"The dissection of a combination into its constituent elements, and the examination of each element in order to see whether its use was obvious or not, is ... a method which ought to be applied with great caution since it tends to obscure the fact that the invention claimed is the combination. Moreover, this method also tends to obscure the facts that the conception of the combination is what normally governs and precedes the selection of the elements of which it is composed, and that the obviousness or otherwise of each act of selection must in general be examined in the light of this consideration. The real and ultimate question is : is the combination obvious or not "

The observations of Diplock, LJ Reymes Cole v. Ellite Hosiery Co. Ltd. 1965 RPC 117 were also relied on : It is expected as sound law that a mere placing side by side of old integers so that each performance of it's own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working interrelation producing a new or improved result, then there is patentable subject-matter in the idea of the working interrelation brought about by the collocation of the integers.

Applying the test set out in the decisions to which we have referred to earlier, the inevitable conclusion that we reach is that the product patented by the plaintiff, though when dissected and as part taken separately may not show inventiveness, a combination of the same, and the fact that new use has been discovered for a combination of known integers, and the further fact that inventive steps by way of ingenuity and skill were required to be and have been displayed in bringing about such a combination and discovering the mode of application of known integers for a product, whose usefulness has been amply demonstrated by the large number of units of wet grinders sold by the plaintiffs since it was first put on the market in the year 1991, establish that the patent granted in favour of the plaintiffs cannot be regarded prima facie as invalid. The plaintiffs must be held to have made out a prima facie case for grant of an injunction so far as it's patent is concerned.We must in this context notice that the defendant is a manufacturer of domestic appliances and has been in the field for quite number of years. According to the defendant, its turn over is of the order of Rs. 30 crore. It manufactures the variety of domestic appliances including mixtures and grinders. Its brand name is 'Buterfly' is wellknown in the market. If, as contended by the defendant, the product manufactured by the plaintiffs is a mere workshop improvement, one would have expected the defendant, more than anyone else, to have come out with such workshop improvement on the basis of the integers which were already well known. The shape in configuration of the truncated conical roller was part of specification filed by construction engineering, as long back as in the year 1980. That was in respect of a bowl mill for the grinding or pulverisation of coal. The pre-existing state of knowledge concerning grinders prior to the introduction of the plaintiffs' product, clearly included knowledge of the grinding surface which could be made rotatable, the placement of roller, grinders above that surface, the movement of the two in synchronisation to bring about a co-action and ensuring the grinding material, to be ground, by making the same pass on between the rollers and the grinding surface, were wellknown. The use of rotating drum was known. The operating of the drum by aid of a motor kept adjacent to the drum was also known. The use of the conical rollers was not also unknown in the use of the wet grinder. The traditional wet grinder, which has been described by the plaintiffs in its advertisements as 'Aaatukal' involved the use of conical shape stone inside the stone bowl.

Despite this pre-existing state of knowledge, it was the plaintiffs, who were the first to visualise the use of the known integers in a combination which enabled the manufacture of a portable wet grinder, which could conveniently be used on top of the table inside the kitchen. Such improvement clearly required the use of ingenuity and skill in adopting the known principles and known devices for a special application, viz., wet grinding in a convenient device in the Indian household kitchen, wherein, wet grinding is almost an essential part of the normal process of preparation of food. Indians settled or living aboard, we were told by counsel at the Bar, also use these devices and that substantial numbers of plaintiffs' devices have found their way into the kitchens of non-resident Indians living abroad.The product manufactured by the plaintiffs cannot be regarded as obvious. As stated earlier, despite the knowledge of the know integers even the defendant who was engaged in the field of manufacturing domestic appliances did not visualise the possibility of using the known integers in the manner done by the plaintiffs. As observed in some of the English decisions relied by the plaintiffs, while hind sight may show that the product and the steps employed in it is simplicity itself, the discovery of such simple processes and combining them in a way that is of practical utility involved ingenuity and skill. Credit cannot be withheld from the plaintiffs for the ingenuity displayed in bringing about this combination and building an apparatus which has been found to be of great use.

The success achieved even by the defendant within a short span of one year in the manufacture of wet grinders, which is practically the very same apparatus made by the plaintiffs with the addition of a supplemental roller, also demonstrate the great utility and popularity of the table top wet grinder. Even according to the defendant, it has in that period of one year, sold as many as 17, 000 units valued over Rs. 7 crore inclusive of excise duty, and sales tax. Such sales were possible only on account of the fact that these table top wet grinders have great utility and satisfy a felt need. The commercial success of plaintiffs prove no doubt by itself will not demonstrate the ingenuity or novelty. Having regard to the fact that such a product had never been on the market, and the fact that ingenuity and skill have in fact been displayed by the plaintiffs in manufacturing the product, the further fact that it has achieved commercial success, is yet another factor which must be held to be in favour of the plaintiffs while considering the grant of the discretionary relief of temporary injunction.The success that has been achieved by the defendant within the short span of one year to which we have referred earlier, also indicates the need of protecting the interest of the plaintiffs. The plaintiffs are entitled so long as its patent is to be upheld to a monopoly for its invention. It is entitled to increase its market share for its products, and if the defendant were to be allowed to continue to manufacture and sell the products which infringes the plaintiffs' patent rights and if the plaintiffs' patent were to be ultimately upheld, the plaintiffs would still have lost the market share which it would otherwise be entitled to secure.

The claim of the defendant that its devices is not an infringement of plaintiffs devices cannot be accepted. It has clearly used all the devices used by the plaintiffs and by merely adding a supplemental roller to the two truncated rollers attached to the shaft, it cannot be said that there has been no infringement at all. Appropriating what has already been patented as part of one's product and adding something thereto, does not render such devices any less an infringement of the patented product as if it were to be held otherwise, anyone who makes the slightest improvement over the pre-existing knowledge can claim to disregard every patent then in existence in respect of pre-existing state of knowledge as reflected in the different devices for which patents had been granted at a prior point of time.

Plaintiffs are, therefore, entitled to an injunction against the infringement of its patent. Defendant's product prima facie does infringe the plaintiffs. Defendant has, therefore, to be restrained from manufacturing and marketing the product similar to that the plaintiffs. An injunction shall issue accordingly, subject, however, to the condition that the plaintiffs shall give an undertaking to compensate the defendant in damages in the event of the plaintiffs not succeeding at the trial of the action. The defendant has placed before the court it's sales figures and the profit that it has realised from the sale of these wet grinders in the last one year. It is stated that it made a profit of Rs. 30.46 lakh on the sale of about 17, 000 units. The plaintiffs, therefore, shall furnish an undertaking that it would compensate the defendant at the rate of Rs. 30.46 lakh for each year during which the action remains at the state of trial, in the event of the plaintiffs ultimately not succeeding in the suit.As regards the alleged infringement of the registered design of the plaintiffs, we are unable to agree with Single Judge. The defendant's design like that of the plaintiffs has also been registered, a fact to which we have already adverted. A design is one which is to be judged primarily by it's appeal to the eye. The design of the defendant's product cannot be said to be an infringement of the plaintiffs. Prima facie, the design involves the placement side by side of the rotating steel drum and the motor. Such placement was not made for the first time by the plaintiffs. It was part of the pre-existing state of the art. The design of the plaintiff is one which essentially incorporates that basic configuration. The other features are built around it. The design of the defendant also makes use of the same combination of the motor placed by the side of the rotating steel drum. Such placement by itself cannot be regarded as an infringement of a design involving such placement of the two adjacent to each other. Keeping that in view as also the fact that the design of the defendant has been granted registration, and also having regard to the aesthetic appeal of its contours which are different from that of the plaintiffs design, it is not possible to hold that the plaintiffs have established a prima facie right for the grant of injunction against the use by the defendant of its registered design.

Insofar as the alleged infringement of the plaintiff's copyright in its' user manual, we are not satisfied that the defendant's user manual as a whole has infringed the copyright of the plaintiffs in its user's manual. The manner in which the different features of the devices are set out, and the steps to be taken in operating the devices the optional attachments available, trouble shorting are necessary parts of the user's manual. The language employed in the defendants manual is not a copy of the plaintiff's manual and cannot be regarded as infringement of the plaintiff's manual. It is only the reference to conical rollers in the drum that can be regarded as vibrative of plaintiffs' copyright, and incidentally of its patent.The injunction against the design infringement is vacated. The injunction regarding the user's manual is limited to all references direct or indirect to the conical rollers.

Counsel for the appellant submitted that he has not been heard on the application for combining the causes of action, though he was heard by the trial judge on the applications for injunction. Orders permitting combining of causes of action in case like the one on hand are usual and are normally granted. No special reason has been submitted before us for not granting the permission. We, therefore, decline to interfere with the order permitting the combination of the causes of action for infringement of patent, design and copyright.

Plaintiffs to file the undertakings within a period of one week from today. Appeals are partly allowed. Parties to bear their respective costs in these appeals.

Consequently, pending C.M.Ps, if any are dismissed.

Appeals partly allowed.