IN THE HIGH COURT OF DELHI AT NEW DELHI IA No.3997 of 2012 in CS (OS) No.523 of 2012 Reserved on: November 26, 2013 Decision on: December 12, 2013 U. VARADARAYA NAYAK ..... Plaintiff Through: Ms. Swathi Sukumar with Mr. Anirudha Mitra, Ms. Anur Paarcha and Ms.Essenese Obhan, Advocates. versus S.K. ANAND & ORS. Through: ..... Defendants Mr. Mahender Rana, Advocate for Defendant No.1. Mr. Amarjeet Singh, Mr. Hari Subramanium, Ms. Vernika Tomar and Ms. Vibha Arya, Advocates for Defendants 2 to 4. Mr. Sanjeev Mahajan, Advocate for Defendants 5 and 6. CORAM: JUSTICE S. MURALIDHAR JUDGMENT
1212.2013 1. This judgment disposes of the application by the Plaintiff U. Varadaraya Nayak under Order 39 Rules 1 and 2 of the Code of Civil Procedure 1908 (‘CPC’) for interim relief. Background facts 2. The Plaintiff has filed the above suit seeking a permanent injunction to restrain the Defendants from infringing Patent No.184118 granted in his name for “a twin blade razor”. At the time of filing of the suit on 28th February 2012, the Plaintiff was 68 years old and a retired school teacher living in Mangalore, Karnataka. He states that he holds a B.Sc. degree in Physics, Chemistry and Mathematics and a B.Ed. in Education from Mysore University. He is stated to have been bestowed four National Awards and three International Awards for his research and innovations. He states that he has also been working as an individual inventor in the field of technologies related to solar energy, laboratory apparatus, teaching apparatus, utility devices such as shaving razors etc. for the last 29 years.
3. On 7th March 1994, the Plaintiff applied for a patent for an invention titled ‘a twin blade razor’. It is stated that the grant of patent was opposed by Gillette Company, USA. After the examination of the patent as well as the opposition, the Controller of Patents (‘COP’), by an order dated 9th April 2008, granted the Plaintiff the patent for the above invention. The grant of patent was recorded in the Register of Patents on 29th July 2008. The patent is valid for a period of 20 years from the date of filing. In other words, the patent is valid up to 7th March 2014.
4. It is stated that by an order dated 14th December 2007 the Deputy COP, Chennai held that the inventive feature of the Plaintiff’s Patent No.184118 was “the novel manner in which the holes are positioned in relation to the upper blade and lower blade”. It was held that positioning of holes “can neither be a routine choice for the cartridge designer nor can the cartridge designer be aware of it and therefore is non-obvious…[in]. the sense that it would not have occurred to any specialist in the field of razor manufacture or design, had such a specialist been asked to find a solution to the particular problem of cleaning the gap between blades (5,6).”
It was held that the inventive feature of Patent No.184118 did not occur to the opponent though it was simple.
5. The Plaintiff states that there are as many as five claims in the above Patent No.184118. It is stated that the novelty and inventive step of the suit patent reside in the combination of the following integers/elements of the Plaintiff’s razor:
“(a) A lower blade separated from an upper blade by a spacer (b) The lower blade partly overlapped by the upper blade (c) Holes provided on the lower blade such that each hole is partly covered by the upper blade and remains partly exposed.”
The plaint 6. In para 13 of the plaint, the Plaintiff states that he wrote a letter dated 8th October 2003 to Laser Shaving (India) Pvt. Ltd. (‘LSIPL’) (Defendant No.2) having its offices at New Delhi, Hyderabad and Mumbai, expressing his willingness to license/assign his inventions related to shaving equipments (i.e. the then pending suit patent and granted Patent No.181580 related to a protective case for a safety razor head). The Plaintiff states that in the said letter he had explained the inventive features of his inventions to Defendant No.2.
7. In para 14, the Plaintiff states that Mr. S.K. Anand (Defendant No.1), “is believed to be the Chief Executive Officer (‘CEO’) in Harbans Lal Malhotra & Sons Pvt. Ltd. (Defendant No.3)”. In the same paragraph the Plaintiff avers that LSIPL (Defendant No.2), Malhotra International (P) Ltd. (Defendant No.4), Vidyut Metallics Pvt. Ltd. (Defendant No.5) and Supermax Personal Care Pvt. Ltd. (Defendant No.6) are associated companies of the ‘House of Malhotra’ and involved in the activity of manufacturing and selling razors that are using the Plaintiff’s patented invention, thereby infringing the patent of the Plaintiff. It is further averred that Defendants are a common economic entity. The Plaintiff states that the exact relationship between the Defendants could be ascertained after discovery in the present suit.
8. In para 15 of the plaint it is stated that following the letter of 8th October 2003, the Plaintiff on 14th October 2003 had a telephonic conversation with Mr. S.K.Anand (Defendant No.1) in respect of both the inventions related to shaving equipments. It is further stated that Defendant No.1 responded to the Plaintiff’s letter dated 8th October 2003 written to Defendant No.2 and requested the Plaintiff to send him the detailed specifications of both inventions along with the correspondence related to the suit patent. The Plaintiff states that he sent a letter dated 22nd October 2003 to Defendant No.1 sending him the “complete specifications, drawings and patent certificate in respect of Patent No.181580 and in the same letter assured him that he would be sending documents pertaining to the suit patent including the documents related to the opposition proceedings initiated by the Gillette Company, USA.”
It is then stated that on 23rd October 2003, the Plaintiff sent Defendant No.1 the documents pertaining to the suit patent which included provisional as well as complete specifications, drawings related thereto and all the documents and correspondences received by the Plaintiff from the Patent Office, Chennai. By a letter dated 29th October 2003, the Plaintiff requested Defendant No.1 to “reconsider his Patent No.181580 for assignment/licensing.”
It is stated that when he did not hear from the Defendants, the Plaintiff sent reminder letters dated 27th December and 29th December 2003 requesting them to let the Plaintiff know if they were interested in licensing/assignment of any of his inventions.
9. In para 20 of the plaint, it is stated as under:
“20. It is only thereafter when the Plaintiff had a telephonic conversation sometime in January 2004 with Defendant No.1 that the Defendants responded that they are not interested in any of his inventions. Considering that the Defendants indicated disinterest in commercial exploitation of the invention forwarded by the Plaintiff, the Plaintiff considered the matter closed and did not thereafter pursue or interact with the Defendants”.
10. The plaint is silent on what happened for a period of seven years thereafter. In para 21 it is stated as under:
“21. In or around last week of December 2011, the Plaintiff was shocked to learn that the Defendants are involved in the manufacture and sale of razors that using the same technology/invention shared by the Plaintiff in 2003. The Plaintiff had in good faith treated the matter as closed and did not anticipate that the Defendants would blatantly exploit the Plaintiff’s invention shared by the Plaintiff with the Defendants in good faith in 2003. It is pertinent to note that despite coming from a less privileged economic background, the Plaintiff had diligently expended his meager resources in renewing the Patent No.184118 from time to time spending in excess of Rs.43,000/-. The consistency with which the Plaintiff, a retired school teacher, has maintained his rights in the suit patent speaks volumes about the faith that he reposed in the commercial viability of his invention and in the patent system of his country”.
11. In para 22 of the plaint, the Plaintiff has listed out 12 infringing products manufactured by Defendants 2, 4, 5 and 6. It is not in dispute that each of the products list in para 22 is a triple blade razor. In para 25 it is stated that upon coming to know the above fact, the Plaintiff himself conducted an investigation and found that the Defendants’ infringing products, using a technology identical to the one under the suit patent, were being sold in the domestic market including within the territorial jurisdiction of this Court.
12. In para 26 of the plaint, the Plaintiff sets out the particulars of infringement. He states that on perusal of the triple blade razors procured by the Plaintiff from the market, the Plaintiff noticed that the Defendants have unauthorisedly copied/incorporated all the essential elements and combination of elements/integers of the Plaintiff’s registered patent namely:
“(a) a lower blade separated from an upper blade by a spacer (b) the lower blade partly overlapped by the upper blade (c) holes provided on lower blade such that each hole is partly covered by the upper blade and remains partly exposed.”
13. The Plaintiff has in his plaint relied upon a technical report obtained by him from Professor K.V. Gangadharan, National Institute of Technology, Surathkal, Mangalore, Karnataka (‘NITK’). The comparison charts and tables explaining the similarities between the infringing products of the Defendants and the elements of claims of the Plaintiff in the suit patent have been set out in para 26. It is stated in para 29 that “the cause of action for the present suit arose when the Plaintiff came to know in or around last week of December 2011 that the Defendants were manufacturing and marketing the Plaintiff’s ‘Twin Blade Razor’ using identical technology and know-how as that of the Plaintiff’s patent”. The cause of action is said to have further arisen in January 2012 when the Plaintiff received the report of Professor K.V. Gangadharan from NITK. Apart from praying for a permanent injunction, the Plaintiff has also claimed damages in the sum of Rs.20 lakhs and for rendition of accounts and profits earned by the Defendants and delivery up of infringing goods for destruction. The written statement of Defendant No.1 14. Summons in the suit and notice in the application IA No.3997 of 2012 were issued on 2nd March 2012. Defendant No.1 in his written statement filed on 16th April 3012 stated at the outset that there was no cause of action disclosed against him in the plaint. He was neither manufacturing nor selling any twin blade razor. He stated that the Plaintiff was aware that Defendant No.1 had retired from the services of Defendant No.3 way back in 1998 and was not thereafter entitled to represent Defendant No.3. Defendant No.1 denied having any telephonic conversation or correspondence with the Plaintiff in respect of the suit patent either in his personal capacity or on behalf of Defendant No.3. Defendant No.1 alleged that the Plaintiff had fabricated the correspondence to mislead the Court. He contended that he was neither a necessary nor a proper party to the proceedings.
15. Defendant No.1 pointed out that the product ‘Laser3Petals’ and ‘Topaz3’ have been manufactured and marketed only by Defendant No.2 and not by Defendant No.3. He further pointed out that Defendants 5 and 6 are competitors of Defendants 2, 3 and 4 and, therefore, the suit is bad for misjoinder of parties. Defendant No.1 has also listed out the prior art in the US and Canadian patents as well as some Indian patents in terms of which, according to him, the claims made by the Plaintiff in the suit patent were in public domain and, therefore, not an invention within the meaning of the Patents Act, 1970 (‘PA’). Reference is made to US Patent No.4641429 (hereafter ‘US Patent ’429’) filed on 24th December 1984 i.e. at least nine years before the date of fling of Patent No.184118. Reference is also made to US Patent No.3724070 (hereafter ‘US Patent ’070’) filed on 15th March 1971 which also showed the presence of holes in the lower blade and that the holes in the lower blade were partly covered by the upper blade. Canadian Patent No.1101652 filed on 31st October 1978 showed that the lower blade and the holes therein extended forward relative to the cutting edge of the upper blade. Reference is also made to PCT Publication No.WO199119596 (hereafter ‘PCT596