IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED: 18.05.2009 C O R A M: THE HONOURABLE MR.JUSTICE S.J.MUKHOPADHAYA and THE HONOURABLE MR.JUSTICE F.M.IBRAHIM KALIFULLA O.S.A.Nos.91 & 92 of 2008 M/s.TVS Motor Company Limited, Jayalakshmi Estates, No.8, Haddows Road, Chennai – 600 006. .. Appellant in both the OSAs/ Applicant in OA 1272/2007 and Respondent in OA 1357/2007 vs. M/s.Bajaj Auto Limited, Bombay-Pune Road, Akurdi, Pune – 411 035. .. Respondent in both the OSAs/ Respondent in OA 1272/2007 and Applicant in OA 1357/2007 Original Side Appeals against the common order dated 16.02.2008 in O.A.1272 of 2007 in C.S.No.979 of 2007 and O.A.No.1357 of 2007 in C.S.No.1111 of 2007 respectively on the file of this Court. For Appellant : Mr.A.L.Somayaji SC for Mr.T.K.Bhaskar in O.S.A.91/2008 Mr.P.S.Raman Senior Counsel for Mr.T.K.Bhaskar in OSA 92/2008 For Respondent : Mr.C.A.Sundaram Senior Counsel for Mr.A.A.Mohan in OSA 91/2008 Mr.R.Krishnamurthi SC for Mr.A.A.Mohan in OSA 92/2008 - - - - - C O M M O N J U D G M E N T F.M.IBRAHIM KALIFULLA, J. O.S.A. No.91 of 2008 has been filed by the Appellant as against https://hcservices.ecourts.gov.in/hcservices/ the fair and decreetal order dated 16.02.2008, passed in O.A.No.1272 of 2007 in C.S.No.979 of 2007, in and by which, the Appellant's application for an order of interim injunction restraining the Respondent herein from in any way interfering with the manufacturing and marketing of the Appellant's products using Internal Combustion (IC) engine with 3 valves and 2 spark plugs pending the disposal of C.S.No.979 of 2007 was rejected. 2. O.S.A. No.92 of 2008 has also been filed by the same Appellant challenging the order dated 16.02.2008, passed in O.A.No.1357 of 2007, in C.S.No.1111 of 2007, wherein, the Respondent's prayer for an ad-interim injunction restraining the Appellant herein from in any manner infringing the Respondent's Patent No.195904 and/or from using the technology/invention described in the said Patent No.195904 and/or from manufacturing, marketing etc., for sale or exporting 2/3 wheelers, including the proposed 125 cc 'FLAME' motorcycle containing an Internal Combustion engine or products which would infringe the Respondent's Patent No.195904 pending disposal of C.S.No.1111 of 2007 was granted. 3. By a common order dated 16.02.2008, passed in O.A.No.1357 of 2007 in C.S.No.1111 of 2007 and O.A.No.1272 of 2007 in C.S.No.979 of 2007, the learned Judge while granting interim injunction as prayed for by the Respondent in O.A.No.1357 of 2007 in C.S.No.1111 of 2007, dismissed the application of the Appellant in O.A.No.1272 of 2007 in C.S.No.979 of 2007. 4. Both the Appellant and the Respondent are in the automobile field and are manufacturing two wheelers of their own brands. The dispute involved in this litigation pertains to the patent right of the Respondent bearing Patent No.195904 of 16.07.2002, granted by the Patent Office with its sealing dated 07.07.2005. Under the said patent, the Respondent got the exclusive right to prevent third parties from making, using, offering for sale, selling or importing for those purposes 'An improved internal combustion engine working on four stroke principle'. The said patent also places restriction for grant of such patent to any one else for a period of 20 years from 16.07.2002. 5. In the suit in C.S.No.1111 of 2007, the Respondent has sought for a permanent injunction to restrain the Appellant from causing any infringement to Patent No.195904 and/or from using the technology / invention described in the said patent in 2/3 wheelers including the proposed 125 cc 'FLAME' motorcycle of the Appellant. They further prayed for a preliminary decree for rendering accounts of profits of the Appellant in the sale of 125 cc 'FLAME' motorcycle and a sum of Rs.10,50,000/- as damages for infringement of Patent No.195904. The last part of the prayer is for destruction of all the infringing copies and articles including vehicles containing https://hcservices.ecourts.gov.in/hcservices/ engines that infringes Patent No.195904. 6. In the affidavit filed in support of O.A.No.1357 of 2007, while describing the invention, the Respondent has stated that it invented an unique technology of using two spark plugs for efficient burning of lean air fuel mixture in a small bore engine (bore size between 45 mm and 70 mm). According to the Respondent, though the use of two spark plugs in some small bore air cooled engines in racing applications in 1950's as well as in large bore engines or in high performance / racing bikes which do not run on lean air fuel mixture was known in the automobile industry, the same is not comparable to the invention of the Respondent. 7. According to the Respondent the combustion of air fuel i.e. the process of burning would be richer due to the consumption of more fuel in racing engine than the chemically correct ratio of air and fuel which would differentiate as against a lean burn engine. In sum it is claimed by the Respondent that the invention is directed to improve the combustion of lean fuel mixture in the small bore engine ranging between 45 mm and 70 mm for improved fuel efficiency by using a pair of spark plugs to ignite the air fuel mixture. 8. It was further pleaded that the existence of number of valves is not an essential feature of its invention in as much as its invention is spark plug centric and not valve centric. It is therefore claimed that the existence of third valve in the Appellant's product cannot be taken as a variant as the same was not material to the invention. The Respondent was stated to have applied for the grant of patent on 16.07.2002, which was granted/sealed on 07.07.2005 and the grant was published in Issue No.28/2005 dated 29.07.2005. It was further claimed that the 125 cc engine in the Appellant's product 'FLAME' infringes the Respondent's patent No.195904 and therefore the Appellant should be restrained by way of an interim injunction pending suit. 9. The said application of the Respondent was resisted by the Appellant by contending that the use of two spark plugs in an IC engine was a prior art for which no patent could have been applied for and that the Respondent resorted to a deceptive method by introducing a limitation of bore size to the US Honda patent which did not have any such limitation. According to the Appellant the US Honda Patent No.4534322 which provides for use of two spark plugs did not restrict the application of its patent to the bore dia and that there was no reference to 'more than 70 mm' in the said patent as stated by the Respondent in its averments. It is therefore contended that because of the distorted version of the Respondent while obtaining the patent No.195904 which issue has to be https://hcservices.ecourts.gov.in/hcservices/ determined in the revocation application filed by the Appellant, the Respondent is not entitled for the equitable relief of injunction as prayed for in the application. 10. According to the Appellant, the argument of twin spark plugs was in public knowledge after the expiry of the 20 years period of US Honda Patent No.4534322, dated 13.08.1985, besides the construction of three valves configuration in the Appellant's engine was protected by the patent granted to AVL which again is covered by US Patent No.6520 146 and Indian Patent No.196636, which has been accepted and not challenged. In other words, according to the Appellant, the use of twin spark plugs in its engine with three valves resulting in combustion of lean air fuel mixture cannot be taken to have infringed the so called invention of the Respondent under patent No.195904 as the same was hit by prior art, apart from the special characteristics of three valves in the Appellant's engine. 11. The Appellant specifically denied the stand of the Respondent that the third valve in the Appellant's engine was a cosmetic one and contended that the said valve has its own specific functions in the operation of its IC engine for better combustion efficiency and therefore the alleged infringement of the Respondent patent cannot be accepted. 12. By making a specific reference to the claim made by the Respondent in the complete specification filed by it before the authorities in 2004 and with regard to the provision of twin spark plugs as compared to the averments contained in the affidavit filed in support of the injunction application, the Appellant pointed out that what was claimed in the complete specification varies with what is claimed in the application filed in support of the injunction and that the Respondent cannot be permitted to improve the functions as mentioned in the complete specification by making any statement in the affidavit filed in Court. In other words it was contended that the Respondent will have to stand or fall by what is stated in the complete specification in regard to the specific functions of the twin spark plugs which according to the Appellant was only related to its position in the engine and not in relation to its advantage in making the combustion of lean air fuel mixture. 13. It is stated that the shift made by the Respondent from two plugs centric description of 2003 to two valves centric description of 2004 was due to the existing discovery of 1985 US Honda patent and such being the case, according to the Appellant, the Respondent can never be permitted to shift its claim once again to twin spark plugs centric description to its so called invention. 14.The Appellant also placed reliance upon the Indian Patent https://hcservices.ecourts.gov.in/hcservices/ application No.678/MUM/2001 filed by Honda in July 2001 in support of its stand that plurality of ignition plugs to four stroke engine with an intake valve and an exhaust valve to achieve reduction of fuel cost was a known factor in the automobile industry. 15. By relying upon the patent granted to AVL, the Appellant contended that the third valve is not a cosmetic addition but had a specific purpose, in as much as, it is supported by the grant of patent by the authorities and that a contra statement of the Respondent would go against the patent which is not permissible in law. It is claimed that the two inlet valves provided in the Appellant's engine are different from each other and have a specific and independent function to each other. The Appellant would further contend that though the registration of Respondent's patent in 2005 would date back to the original date of application since it being a new one and that its validity is the subject matter of cancellation / revocation, claim for injunction should not have been countenanced. It was therefore contended that the injunction application was liable to be rejected. 16. While dealing with the respective applications of the Appellant as well as the Respondent for interim injunction, the learned Judge by an interim order dated 16.02.2008, while granting interim injunction as prayed for by the Respondent in O.A.No.1357 of 2007 in C.S.No.1111 of 2007, dismissed the Appellant's application No.1272 of 2007 in C.S.No.979 of 2007. 17. Aggrieved against the said common order of the learned Judge, the Appellant has come forward with these appeals. 18. Mr.A.L.Somayaji and Mr.P.S.Raman, learned senior counsels appeared on behalf of the Appellant and advanced arguments. Mr.C.A.Sundaram, learned senior counsel appeared on behalf of the Respondent made his submissions. 19. Mr.A.L.Somayaji, learned senior counsel in his submissions after referring to the respective contentions contained in the affidavit filed in support of the application in O.A.No.1357 of 2007 filed on behalf of the Respondent, the counter affidavit to the said application as well as the rejoineder filed by the Respondent submitted that the exclusive right of patent claimed by the Respondent is hit by the vice of prior art, apart from the fact that the Appellant's product is not comparable to that of the Respondent, in as much as, apart from the formula of twin plugs, in the Appellant's engine there is an additional valve viz., third valve, that the third valve is not a cosmetic addition, but an essential one and therefore there was no question of infringement in respect of the patent right of the Appellant. https://hcservices.ecourts.gov.in/hcservices/ 20. The learned senior counsel also took the stand that the Respondent was making a flip-flop claim from the date of provisional specification made in 2002 and the final specification made in 2003 as well as the complete specification made in 2004. According to the learned senior counsel, the teaching of the patent was completely altered in the claims of the Respondent between the years 2002 and 2003 viz., between the provisional claim and the final specification. According to him while in the provisional specification in 2002 and in final specification in 2003 the teaching was two plug centric of the invention, having noted that the Honda US patent No.4534322 A1 had already introduced two spark plugs arrangement with three valves in a neutral bore engine, in the complete specification made in the year 2004 the Respondent switched over to two valves specific description giving a go bye to the twin plugs centric description. 21. The learned senior counsel in his submissions stated that on infringement what is construed as a patent property and compare the same with the alleged infringed product, the burden is heavy on the plaintiff to establish the said factors. 22. The learned senior counsel relied upon the following decisions in support his contentions : (a) Reliance was placed upon AIR 1982 SC 1444 (Bishwanth Prasad Radhey Shyam Vs. H.M. Industries) in particular paragraph No.17 to point out that patent is granted only for invention which must be new and useful i.e. it must have novelty and utility and therefore essentially for a validity of the patent, it must be the inventor's own discovery as opposed to mere verification of what was already known before the date of the patent. The learned senior counsel by relying upon the ratio of the decision as held in paragraph 33 in the above said decision contended that even after the sealing of the patent, the validity of the patent can be challenged in the High Court on various grounds for revocation or infringement and that the presumption in favour of the validity of the patent cannot be accepted. Again by referring to paragraph 44, the learned senior counsel contended that the specifications and the claims must be looked at and construed together in order to find out what was the invention as claimed in the patent. https://hcservices.ecourts.gov.in/hcservices/ (b) The learned senior counsel then relied upon 1948 (52) CWN 253 (Boots Pure Drug Co. Vs. May and Baker Ltd.) wherein the Division Bench of the Calcutta High Court has held that in order to get an interim injunction, the prima facie validity of the patent should be shown that the prima facie infringement must also be proved apart from availability of balance of convenience. It was also stated therein that as a rule of practice if a patent is a new one, a mere challenge at the Bar would be quite sufficient for the refusal of an interim injunction as compared to a patent which is fairly old and has been up into use, in which case, it would be safe for the Court to proceed upon the presumption of its validity. The said principle was applied by the Delhi High Court in the decision reported in AIR 1980 Delhi 132 (National Research Development Corporation of India, New Delhi Vs. The Delhi Cloth and General Mills Co. Ltd and ors.) (c) The learned senior counsel then relied upon the Division Bench decision of the Delhi High Court reported in AIR 1997 Del 79 (Franz Xaver Huemer Vs. New Yash Engineers), for the proposition that even in intellectual property cases, the plaintiff has to prove prima facie case, balance of convenience and irreparable injury and that the registration of patent alone would not be sufficient and that the Court must look at the whole case i.e. the strength of the case of the patentee and the strength of the defendant. (d) The learned senior counsel relied upon the decision of the Calcutta High Court reported in AIR 1996 Cal 367 (Hindustan Lever Ltd. Vs. Godrej Soaps Limited and Ors.) wherein a passage from the decision of an English case reported in (1972) 1 All ER 1023 (Hubbard Vs. Vosper) of Lord Denning is quoted which is to the effect that while considering the grant of an interlocutory injunction, the Judge should look at the whole case and that he must have regard not only to the strength of the claimant but also to the strength of the defendant. (e) The learned senior counsel then relied upon AIR 2000 Delhi 23 (Standipack Pvt. Ltd. and Anr. Vs. Oswal Trading Co. Ltd. etc.) for the proposition that no presumption of validity is attached to a patent granted by the Controller under the Act not https://hcservices.ecourts.gov.in/hcservices/ withstanding examination and investigation made under Sections 12 and 13 of the Act. It was also relied upon for the proposition that where an application is filed seeking for revocation of patent and question the validity of it, the Court should not grant an injunction more so when serious controversy exist as to whether or not the invention involves any new inventive skill having regard to what was known or used prior to the date of the patent. (f) Reliance was also placed upon 2005-BCR-3-191 (Novartis AG Vs. Mehar Pharma) of the Bombay High Court wherein the settled principle of any matters to grant of interim injunction in relation to a patent, the party applied for it should satisfy that there is probability of the plaintiff succeeding on the trial of the suit and when the patent is of a recent date, no interim injunction should be granted especially when there is serious question as to the validity of the patent was raised by the defendant to be tried in the suit. (g) The learned senior counsel then relied upon 2006 (33) PTC 339 (NULL) (Dhanpat Seth and Ors Vs. Nil Kamal Plastic Crates Ltd.) the decision of the Himachal Pradesh High Court wherein the learned Judge held that by virtue of Section 107(1) of the Patents Act, in any suit for infringement of patent, every ground, on which it may be revoked under Section 64, is available as a ground for defence. The said decision of the learned single Judge was affirmed by a Division Bench in the decision reported in AIR 2008 HP 23. (h) For the proposition that where the patent is of recent origin and its validity has not been tested, the Court should not grant injunction based on the alleged infringement, as well as, the ratio that mere grant of patent does not guarantee its validity, reliance was placed upon an unreported judgment of a learned Judge of Delhi High Court Mr.Justice S.Ravindra Bhat dated 19.03.2008 in I.A.No.642/2008 in CS (OS) 89/2008 (F.Hoffmann-La Roche Ltd., & Anr. Vs. Cipla Limited). The said order of the learned single Judge was also confirmed by the Division Bench in its order dated 24.04.2009 in FAO (OS) No.188 of 2008. In the case on hand, the Respondent obtained the certificate of Patent No.195904 dated 16.07.2002 and https://hcservices.ecourts.gov.in/hcservices/ the sealing was made on 07.07.2005. (i) The learned senior counsel then relied upon a Full Bench decision of the Delhi High Court reported in AIR 2000 Delhi 117 (Metro Plastic Industries (Regd.) Vs. M/s. Galaxy Footwear) wherein a provision similar to Section 64 of the Patent Act as provided under Section 51A and 53 of the Designs Act was dealt with by the Full Bench and the Full Bench took the view that though no hard and fast rule can be laid down, in the absence of an application for cancellation of the design such a right can be enforced and no defence can be taken based on a ground of cancellation. The Full Bench further ruled that once an application for cancellation has been made then the Court can take into consideration all the relevant facts which would include the grounds raised in the application for cancellation while considering an application for grant of injunction and that consideration must be made judicial. 23. Mr.P.S.Raman, learned senior counsel also appearing for the Appellant by referring to various provisions contained in the Patent Act took pains to point out by referring to the International Search Report which was passed on to the Respondent on 13.08.2004, to state that subsequent thereafter, the Respondent came forward with its amended Patent application on 08.11.2004, in which the claim was two valves centric as against twin plugs centric as claimed in the provisional specification made in 2002. 24. The learned senior counsel by making a specific reference to the stand of the Respondent in its amended final specification made in 2004 where specific reference has been made to US Honda Patent No.4534322 A1, pointed out that in the said amended claim, the Respondent highlighted the feature of two valves engine with improved combustion characterises and there by gave a go bye to the twin plug centric in the original specification of 2002. The learned senior counsel therefore contended that the above factors make it clear that the so called right of patent cannot be accepted in as much as US Honda Patent No. 4534322 A1 of 1985 already covered the entire features as it was a prior art. 25. The learned senior counsel by referring to the complete specification of the Honda company made on 24.01.2001, which was made 1½ years before the Respondent's application for patent viz., 16.07.2002, contended that the same was already teaching the twin plugs provision with three valves and four valves configuration. The learned senior counsel therefore contended that the exclusive right claimed by the Respondent based on Patent No.195904 dated https://hcservices.ecourts.gov.in/hcservices/ 16.07.2002, is open to challenge on very many grounds in the Appellant's application for revocation of the said patent under Section 64 of the Patents Act and therefore a prima facie case is made out for a triable issue to cancel the said patent. 26. The learned senior counsel by referring to the technical collaboration agreement of the Appellant with AVL, Austria under which the three valves engine of 75 cc capacity with 44 mm bore having been permitted to be manufactured with its whole specifications and when the product of the Appellant stand apart from the product of the Respondent with three valves configuration there would be no question of infringement of the so called patent right of the Respondent. 27. The learned senior counsel while referring to the Technical Collaboration Agreement dated 13.11.2000, of the Appellant with M/s AVL, Austria contended that the Appellant had agreed for a consideration of EURO 349.522 for designing the new 3-valve cylinder head with AVL Controlled Combustion Burn Rate (CCBR Combustion) apart from a sum of EURO 409.000 by way of consideration for the Technical Collaboration Agreement, and that the Appellant's product of 125 cc 'FLAME' motorcycle with three valve configuration is in no way comparable to the Respondent's patented product in Patent No.195904 and therefore there can be no infringement even if the Respondent's patent was a recognised one. 28. The learned senior counsel however by making a specific reference to the Search Report dated 08.06.2004, mailed on 13.08.2004 pointed out that the Respondent's provisional patent application dated 16.07.2002, was rejected on the ground of prior art of US Patent No.4534322 A1 (MATSUDA) dated 13.08.1985 and that in the subsequent complete specification dated 07.07.2003 and the amended final specification dated 08.11.2004, the Respondent shifted its claim of twin plug centric into one of twin valve centric and therefore there was a prima facie case made out for a triable issue to cancel the patent. 29. The learned senior counsel drew our attention to the order of the Hon'ble Supreme Court dated 03.03.2008, passed in C.S.No.1759 of 2008 in support of his stand that having regard to the provision contained in Section 13(4) read with Sections 47 and 48 of the Patents Act especially by taking note of the effect of