R.C. Lahoti, J.

1. This order disposes of the plaintiffs prayer for the grant of ad interim injunction.

2. The plaintiff has filed a suit complaining of infringement by the defendant of the plaintiffs patents No. 154388 dated 4.6.80 and No. 157991 dated 8.6.82.

3. The plaintiff is engaged in the manufacture and sale of glass tiles through a partnership firm M/s. Mridul Enterprises wherein he is a partner besides his father and brother. According to the plaintiff he is actively engaged in research and development work relating particularly to glass tiles. The glass tiles made in India had a few disadvantages such as the edges of such tiles were sharp which could cause injury; surface of the tiles was not smooth and was devoid of aesthetic value and it had a tendency to get displaced when applied to a wall surface. Such tiles were produced from molten glass. The plaintiffs research involving considerable expenditure and effort resulted into a solution forming subject matter of patent No. 154388 effective from 4.6.80. It related to a glass tile having a front face thereon the distance between two opposite side walls of the front face was smaller than the distance between the side walls in any other plane of the tiles besides the front face. Further efforts, research and developmental work of the plaintiff resulted into a process for the manufacture of glass tiles from crushed glass in departure from the previously known method of producing glass tiles from molten glass. This process of producing glass tiles from crushed glass resulted into the grant of patent No. 157991 effective from 8th June, 1982. The claim No. 1 of this patent reads as under:

A process for the manufacture of opaque or translucent glass tiles which comprises in crushing single or different glass separately or together to form a mixture of glass of a particle size not less than 10 mesh, compacting said crushed glass under pressure to form a shaped composite, subjecting the shaped composite to the step of heating it to temperature of the order of 800 degree to 900 degree C to allow a further compaction of atleast 5%, said compacted and shaped composite being heated to a temperature sufficient enough to cause a deformation of the edges of the tile and simultaneously polishing of said tile.

The copies of the specifications of the two patents have been filed.

4. The plaintiff further alleges that the tile of the aforesaid patents is a definite and distinct improvement with that of the prior art, which is the exclusive right of the plaintiff under Section 48(2)(b) of the Patents Act, 1970. The defendant has started manufacturing and selling of glass tiles which constitutes an infringement of the plaintiffs patents. Hence the suit which was filed on 15th March, 1993.

5. Let it be stated at the very outset that insofar as patent No. 154388 is concerned, it was conceded at the bar that 14 years term of patent contemplated by Section 53(1)(b) of the Act having expired by the time the matter came up for hearing, the suit was rendered infructuous to that extent. In the succeeding paragraph the defence to the extent of patent No. 157991 dated 8.6.82 is only being noticed.

6. The principal ground on which the defence is based is that the defendant was using the well known process for manufacturing tiles covered by lapsed patent No. 111139 dated 17th June, 1967. The plaintiff had wrongly obtained patent of a process which was part of a lapse patent and therefore was prior published. The plaintiff is not entitled to any relief as he has made material concealment of facts and has also made false suggestions. The plaintiffs patent is liable to be revoked and this by itself provides an adequate defence to the defendant which would enable the suit for infringement being rendered unsustainable. The process set out by the plaintiff was not a patentable invention under Section 2(1)(j). It was liable to be revoked under Sections 64(1)(a) and (j) of the Act, which provides for the High Court revoking a patent if it was claimed in a prior patent and/or obtained on a false suggestion or representation.

7. The defendant has filed Annexure-1 a comparative table comparing the prior art as was existing in patent No. 111139 and the patent under consideration. According to the defendant this comparative study would enable forming an opinion that all the steps involved in the process of patent No. 111139 were adopted identically by the plaintiff with the slightest of modification. There was no novelty lying in patent No. 157991.

8. According to the defendant its process comprises,

Powdering of glass to 100 mesh;

Mixing the dry powder with water or with water solution organic binder;

Adding colouring agent and mixing the mixture thoroughly to form homogenising mixture;

Pressing the mixed powder to the desired shape and size in mould;

Heating the said mould gradually in a tube furnace having temperature level of 500 degree to 800 degree Centigrade in the middle of the furnace;

Annealing the said pressed tiles

9. Annexure-1 with the written statement, referred to in the preceding paragraph, reads as under:

Annexure-1

COMPARATIVE CHART

PRIOR ART GIVEN IN THE PLAINTIFFS PATENT SPECIFICATIONS:PRIOR ART GIVEN IN SPECIFICATIONS-PATENT NO. 111139, DATED 17.6.67 IN FAVOUR OF B.J. Hegde)PLAINTIFFS

ALLEGED INVENTION PATENT NO. 157991

Pulverised glass of substantial particlePowdering of glass to 100 to 200 mesh. .Powdering the colo-ured glass not less than 10 mesh upper limit not defined so includes 100 to 200 mesh).

Adding binder to the

pulverised glass.Adding water or watersolution of organic binder.

Adding dispersing agent with colouring agent or pacifying agent.Adding organic binder See Claim-7) Not necessary since coloured glass is powdered.

Compacting the said mixture.Pressing the above mixture to desired shape and size in mould.Compacting Pressing) the mixture for a shaped composite.

Heating the said compacted mass to a temperature at which glass becomes viscous.Sintering heating) the said shaped tile at a temperature of 750 deg. Centigrade above softening point viscous) so as to obtain compact tile.

Anneapling the said tiles means for polishing tiles).Heating the shaped composite to temperature of 800 deg. Centigrade to 900 deg. Centrigrade to become viscous) for further compaction.

Polishing the tiles.





10. The plaintiff has filed a replication. It is significant to note that existence of lapsed patent No. 111139 dated 17th June, 1967 and the specifications mentioned in the chart are not denied. What has been submitted, inter alia, is that the glass tiles of patent No. 111139 had the same disadvantage as that of molten, namely, that the edges were sharp. One of the differences between the two was that of deformation of the edges of the tiles. In Claim No. 1 of patent Number 157991 a heating temperature of 800 degree Centigrade to 900 degree Centrigrade is stated which is distinct from the temperature provided in example 1 of patent No. 111139. In Col. No. 2 of the printed specification of patent No. 111139, it was specifically stated that the tile was heated to a temperature which was not high enough to deform the tile whereas in claim No. 1 of patent No. 157991 it is stated that the tile is heated to a temperature of 800 degree Centrigrade to 900 degree Centigrade to cause a deformation of the edges of the tile. The plaintiff has thus submitted that the two processes are opposed on the point of degree to which heat is applied to the tile.

11. The defendant has filed additional pleadings by way of rejoinder. It is submitted therein that the difference in heating temperature stated by the plaintiff between the two patents is only of a few degrees. Both the processes deal with annealing or polishing of the tile. Thus, the process suggested by the plaintiff in his patent does not have any attribute of any novelty.

12. Section 2(1)(j) of the Patent Act, 1970, defines the invention as under: (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.

13. Clauses (a) and (j) of Sub-section (1) of Section 64 of the Act provide for a patent being revoked if the invention, so far as claimed in any claim of the complete specification was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India and/or if the patent was obtained on a false suggestion or representation.

14.The learned Counsel for the defendant has placed reliance on the law laid down in Gillette Safety Razor Co. v. Anglo-American Trading Co., 30 RFC 465 which has come to be known as Gillette Defence in patent infringement cases. Terrell on the Law of Patents (1982 edition, at pages 170-171) sums up the law of Gillette Defencevide para 6.41 as under:

6.41 Infringement not novel (Gillette Defence) Since no relief could be obtained in respect of an invalid patent, if the defendant could prove that the act complained of was merely what was disclosed in a publication which could be relied on against the validity of the patent, without any substantial of patentable variation having been made, he had a good defence. This is the so-called Gillette defence arising out of the world of Lord Moulton in Gillette Safety Razor Co. v. Anglo American Trading Co. where he said: I am of the opinion that in this case the defendants right to succeed can be established without an examination of the terms of the specification of the plaintiffs letters patent. I am aware that such a mode of deciding a patent case is unusual, but from the point of view of the public it is important that this method of viewing their rights should not be overlooked. In practical life it is often the only safeguard to the manufacturer. It is impossible for an ordinary member of the public to keep watch on all the numerous patents which are taken out and to ascertain the validity and scope of their claims. But he is entitled to feel secure if he knows that that which he is doing differs from that which has been done of old only in non-patentable variations such as the substitution of mechanical equivalents or changes of material, shape or size. The defence that the alleged infringement was not novel at the date of the plaintiffs letters patent, is a good defence in law,and it would sometimes obviate the great length and expense of patent cases if the defendant could and would put forth his case in this form, and thus spare himself the trouble of demonstration on which horn of the well-known dilemma the plaintiff had impaled himself, in validity or non-infringement.

15. Having perused the facts set out in above quoted annexure-1 with the written statement, this Court is satisfied that the defendant has raised prima faciea valid defence to the plaintiffs action of alleged infringement of his patent No. 157991. The plaintiff is, therefore, not entitled to the grant of ad interim injunction prayed for.

16.In Bishwanath Prasad Radhey Shyam v. H.M. Industries, 1982 S.C. 1444, Their Lordships of the Supreme Court have held:

It is important 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 improvement or the combination must produce a new result, or a new article or a better or cheaper article than before.

The fact that the Controller has granted patent does not give rise to presumption in favour of the validity of the patent. 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.

17. In Press Metal Corporation Ltd. v. Noshir Sorabji, 1983 Bombay 144, placing reliance on Godd and Mason v. Mayor and C. of Manchester, (1892) 9 RFC 516, it has been held:

A patent for the mere new use of a known contrivance, without any additional ingenuity in overcoming fresh difficulties is bad and cannot be supported. If the new use involves no ingenuity, but is in manner and purpose analogous to the old use, although not quite the same, there is no invention; no manner of new manufacture within the meaning of the Statute of James.

On the other hand a patent for a new use of a known contrivance is good and can be supported if the new use involves practical difficulties which the patentee has been the first to see and overcome by some ingenuity of his own. An improved thing produced by a new and ingenious application of a known contrivance to an old thing, is a manner of new manufacture within the meaning of the Statute.

18.In Gillette Industries Ltd. v. Yeshwant Bros., AIR 1938 Bombay 347, novelty has been defined as under:

As regards novelty if it can be shown that the new result was long sought for, the persons skilled in the art had been working without success to attain it and had long regarded it as a problem and that the invention of the patentee successfully solved the problem, then such a state of affairs constitutes evidence of the strongest kind that the prior knowledge did not in fact give an obvious clue to the solution and ought not to be considered as destroying subject-matter.

19. The comparative chart Annexure P-l filed by the defendant with the written statement and reproduced hereinabove goes to show that probably the only distinction or improvement claimed by the plaintiff in his alleged invention patent No. 157991 over the prior art given in specificationpatent No. 111139 is one of heating to a particular decree of Centigrade; while the lapsed patent suggested a temperature of 750 Centigrade applied, plaintiffs alleged invention suggests temperature of 800 to 900 Centigrade being applied. For the rest of the process it is substantially the same though the manner of describing and choosing of the words of narration may differ.

20.Vide para 6 of the written statement the defendant has stated:

If the composite shape of the glass powder of mesh defined in patent No. 11139 is taken and heated upto a temperature of 800C. to 900C, it cannot yield the results claimed by the plaintiff as the temperature required to heat the said composite is 750C. as defined in lapsed patent No. 11139. This confirms that patent No. 157991 is invalid.

It is worth being noted that at one stage of proceedings before the Court it was suggested that the two processes followed by the plaintiff and the defendants as also the process involved in the lapsed patent No. 111139 may be subjected to scrutiny by scientific advisor but on 5.5.94 the suggestion was declined to by both the parties.

21. The plaintiff alleges to have expended considerable funds on research leading to the alleged invention by him but the averment does not go beyond a mere averment; it has not been substantiated. So alsovide para 17 of the plaint it has been alleged that the plaintiffs employees in the factory had either migrated to the defendants factory or were won over by the defendant resulting into invasion of the plaintiffs patent. The averment has been denied. The plaintiff has not particularised the averment by naming any supervisor or worker having crossed the floor.

22. Merely because the plaintiffs patent was subjected to an examination by the patent office and thereafter held to be a novelty of invention does not embolden the case of the plaintiff. As held by the Supreme Court in Biswanath Parshads case (supra) the Controllers grant of patent does not give rise to presumption of validity of patent. A mere improvement has to be distinguished from an invention.

23.The Counsel for the defendant has brought to the notice of the Court a decision of this Court in Ravinder K. Gupta v. Ravi Raj Gupta, 1986 PTC 50. The plaintiff, herein, was a defendant in that case. Therein, this Court has held that rounded corners of mottling design of the top and side walls of glass tiles with rounded corners was not novelty of design but was a mere trade variant of the existing tiles with sharp corners and mottling effect. The Court has held it not to be a novelty obtainable. However, it is correct, as pointed out by the learned Counsel for the plaintiff, that the question of process did not come up for consideration before the Court and was not the subject matter of challenge or adjudication then.

24. Be that whatever it may, inasmuch as this Court is not satisfied with the patent sought to be enforced and alleged to have been infringed by the defendant to be an invention within the meaning of Section 2(j) of the Patent Act, 1970, the plaintiff is not entitled to the grant of an ad interim injunction as prayed for.

25. The application for the grant of ad interim injunction is, therefore, rejected.

26. Before parting, it may be made clear that this order does not in any manner pre-judge any of the issues arising for trial in the suit and the parties would be free to substantiate their pleas unobsessed by any observation made herein.

27. However, to protect the interest of the plaintiff in the event of his ultimately succeeding in the suit, it is directed that the defendant shall maintain a complete, true and accurate account of the manufacture and sale of the tiles by it and the same shall be filed duly audited in the Court every six months till the decision of the suit.