M/S.Tvs Motor Company Limited vs M/S.Bajaj Auto Limited on 18 May, 2009

    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

        vs.

M/s.Bajaj Auto Limited,

Bombay-Pune Road,

Akurdi, Pune  411 035. .. Respondent in both the OSAs

 Original Side Appeals against the common order dated 16.02.2008 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 on
the file of this Court.

 For Appellant : Mr.A.L.Somayaji and Mr.P.S.Raman,

        Senior Counsel for M/s.T.K.Bhaskar.

     For Respondent : Mr.C.A.Sundaram,

        Senior Counsel for M/s.A.A.Mohan.

- - - - -

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 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 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
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 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 counsel 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.

 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.

 (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 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 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 1= 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 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
the counter affidavit, the Hon'ble Supreme Court interfered with the order of
injunction granted in favour of the party who already had the patent in its
possession and while setting aside the order of the Division Bench, the Hon'ble
Supreme Court remitted the matter back to make an analysis of the scheme of the
provisions under the Patents Act and its effect on a registered patent.

 30. The learned senior counsel therefore contended that having regard to the
facts pleaded by the Appellant vis-a-vis the patent granted in favour of the
Respondent, there can be every possibility of the Appellant succeeding in its
application for revocation of the patent and therefore the injunction granted in
favour of the Respondent is liable to be set aside.

 31. As against the above submissions of the learned senior counsel for the
Appellant, Mr.C.A.Sundaram, learned senior counsel appearing for the Respondent
in his submissions stated that while seeking for an order of injunction as
against the Appellant what all required was the availability of a registered
valid patent, balance of convenience, irreparable loss and infringement by the
Appellant under the patent law.

 32. The learned senior counsel while transversing the submissions of the
Appellant's counsel contended that in order to show that the patent of the
Respondent was invalid in law, it is the bounden duty of the Appellant to show
that there was a prior art with reference to the patent granted in favour of the
Respondent. Highlighting his submissions, the learned senior counsel submitted
that to examine the question as to what is the patent that exist, it would be
relevant to see how the people in the industry look at the product patented and
what the patent teaches.

 33. The learned senior counsel also contended that the construction of a
validated patent must be accepted. As far as the prior art is concerned,
according to the learned senior counsel what can be looked at in a prior art is
the pith and marrow and one should not compare the complete and provisional
specification for that purpose.

 34. The learned senior counsel relied upon the following decisions in support
his contentions :

 (a) The learned senior counsel relied upon AIR 1936 Bombay 99 (Lallubhai
Chakubhai Vs. Chimanlal & Co.) where a learned Single Judge of the Bombay High
Court held that

 ".....A patentable combination is one in which the component elements are so
combined as to produce a new result or to arrive at an old result in a better or
more expeditious or more economical manner. If the result produced by the
combination is either a new article or a better or a cheaper article than before
the combination may afford subject for a patent....."  ".....A specification
must be construed impartially, and the Court is generally slow to construe it
against the patentee. But the construction must not only be a 'benevolent', but
a reasonable one....."

 "A patent may sometimes be infringed by taking a part only of the invention,
but that depends upon the part for which protection is asked is a new and
material part, especially in the case of a combination. If it is not new and
material, the Court must consider what is the substance of the invention, and to
do so it has to consider the relative importance of all the parts of the
invention. The essential part or the substance of the plaintiff's invention is,
in his own words, the use of pressure, and therefore there could be no
infringement unless the use of pressure by the defendants in their process was
proved......" (underlining is ours)  (b) In the decision reported in 1884 (6)
RPC 49 (William Needham and James Kite Vs. Johnson and Co.) it is held as under:

 "Then comes the question, what is the infringement of a combination of elements
in a machine? There is not an infringement if you have produced the same results
by a different combination of different elements. That is another and a
different combination, and is not either an improvement or anything else of the
other. It is absolutely and wholly different, if there is a different
combination of different elements." (Emphasis added)  (c) In support of the
submission that what the patent teaches should be analysed as was looked into by
the people in the industry viz., based on the knowledge of a skilled man and
common general knowledge, the learned senior counsel relied upon the decision
reported in 1998 RPC 727 (Lubrizol Corp. & another Vs. Esso Petroleum Co. Ltd
and Others) where it is held as under: "Patent specifications are intended to be
read by persons skilled in the relevant art, but their construction is for the
Court. Thus the Court must adopt the mantle of the notional skilled addressee
and determine, from the language used, what the notional skilled addressee would
understand to be the ambit of the claim. To do that it is often necessary for
the Court to be informed as to the meaning of technical words and phrases and
what was, at the relevant time, the common general knowledge; the knowledge that
the notional skilled man would have."  (d) According to the learned senior
counsel by virtue of the amendment to Section 48 (2) (a) & (b) a provision which
was originally positive in its construction is now negatively worded and
therefore the injunction granted should be confirmed. The learned senior counsel
relied upon AIR 1982 SC 1444 (Bishwanath Prasad Radhey Shyam Vs. H.M.Industries)
which was rendered prior to the amendment to distinguish the above legal
position.  (e) In the decision reported in 1972 RPC 457 (The General Tire &
Rubber Company Vs. The Firestone Tyre and Rubber Company Ltd and others) on the
principle of common General Knowledge, it is held as under:

 "For construing the patent in suit and again for reaching a conclusion, if
there was no anticipation, on the issue of obviousness, it is necessary for us
to put ourselves into the position of a skilled addressee at the time the
specification was published on 20th November, 1950. For it is to a skilled
addressee-a skilled man reasonably well versed in the art  that the
specification is deemed to be addressed, and it is by the standards of the
common general knowledge of such a man that one tests whether the invention was
obvious or not."  (f) In the House of Lords decision reported in 1982 RPC 183
(Catnic Components Limited and another Vs. Hill and Smith Limited) at page 242
it has been held as under:

 "My Lords, a patent specification is a unilateral statement by the patentee, in
words of his own choosing, addressed to those likely to have a practical
interest in the subject matter of his invention (i.e. "skilled in the art"), by
which he informs them what he claims to be the essential features of the new
product or process for which the letters patent grant him a monopoly. It is
those novel features only that he claims to be essential that constitute the so-
called "pith and marrow" of the claim. A patent specification should be given a
purposive construction rather than a purely literal one derived from applying to
it the kind of meticulous verbal analysis in which lawyers are too often tempted
by their training to indulge. The question in each case is: whether persons with
practical knowledge and experience of the kind of work in which the invention
was intended to be used, would understand that strict compliance with a
particular descriptive word or phrase understand that strict compliance with a
particular descriptive word or phrase appearing in a claim was intended by the
patentee to be an essential requirement of the invention so that any variant
would fall outside the monopoly claimed, even though it could have no material
effect upon the way the invention worked." (Underlining is ours)  (g) In a
Division Bench decision of the Delhi High Court reported in AIR 1978 Delhi 1
(Raj Prakash Vs. Magnet Ram Choudhary and others) it has been held as under in
paragraph 12 :

 "12. We have therefore, to read the specifications and the claims from the
specifications and the claims from the point of view of the persons in the trade
manufacturing film strip viewers. It is the pith and marrow of the invention
claimed that has to be looked into and not get bogged down or involved in the
detailed specifications and claims made by the parties who claim to be patentees
or alleged violators......" (Underlining is ours)  again in paragraph 13 it is
held that:

 "13.....It is settled law that the title of the specifications of an invention
claimed does not control the actual claim. A misleading title similarly is of
little consequence. It is on a proper construction of the specifications and the
claims that the true nature of the invention claimed is to be determined and the
patent granted has to be construed......" (Emphasis added)  (h) In the decision
of the Judicial Committee of the Privy Council reported in Vol. XX No.32 RPD 745
(Consolidated Car Heating Company Vs. Came) the Privy Council referred to an
earlier decision of the Chancery Division @ pg. 765 which is to the following
effect:

 "In Proctor v. Bennis (L.R. 36 Ch.D. 740), Lord Justice Cotton, at page 750,
said:- "In my opinion omissions and additions may be very material in
considering whether, in fact, the machine of the Defendant is an infringement of
the combination which the Plaintiff claims; but if the Defendant really has
taken the substance and essence of the Plaintiff's combination, the mere fact
that certain parts are omitted or certain parts added cannot prevent his machine
from being an infringement of the Plaintiff's Patent." (Underlining is ours)
thereafter it was ultimately held as under:

 ".....For if the merit consists in the idea or principle which is embodied in
it, and not merely in the means by which that idea or principle is carried into
effect, a machine which is based on the same idea or principle may still be an
infringement, although the detailed means for carrying it into effect may be
somewhat different....."  (i) In another Privy council decision reported in AIR
1930 PC 1 (Canadian General Electric Co. Ltd. Vs. Fada Radio Ltd.) the Privy
Council extracted the words of Lordship Maclean, J., which reads as under:

 "There must be a substantial exercise of the inventive power or inventive
genius, though it may in cases be very slight. Slight alterations or
improvements may produce important results and may disclose great ingenuity.
Sometimes it is a combination that is the invention; if the invention requires
independent thought, ingenuity and skill, producing in a distinctive form a more
efficient result, converting a comparatively defective apparatus into a useful
and efficient one, rejecting what is bad and useless in former attempts and
retaining what is useful, and uniting them all into an apparatus which, taken as
a whole, is novel, there is subject matter. A new combination of well known
devices, and the application thereof to a new and useful purpose, may require
invention to produce it and may be good subject matter for a patent." (Emphasis
added)  (j) In the decision reported AIR 1969 Bombay 255 (F.H. & B. Corpn. Vs.
Unlchem Laboratories) Justice Vimadalal on the question as to what is an
invention has held as under in paragraph 16(i):

 "16(i). An invention consisting of the production of new substance from known
materials by known methods cannot be held to possess subject-matter merely on
the ground that the substances produced are new, for the substances produced may
serve no useful purpose, in which case the inventor will have contributed
nothing to the common stock of useful knowledge (the methods and materials
employed being already known) or of useful materials (the substances produced
being ex hypothesis, useless)."  (k) In the Division Bench decision of our High
Court reported in (2000) 3 MLJ 85 (Gandhimathi Appliances Limited Vs.
L.G.Varadaraju and others) at page No.93 the Division Bench has stated as under
in paragraph 20:

 "20....Though the grant of a patent by itself does not guarantee it's 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 rigourous, as it would otherwise be, if
no patent had been granted in the first place." (Emphasis added)  The Division
Bench has also held in paragraph 30 as under:

  "30. 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 now show
inventiveness, a combination of the same, and the fact that a 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....."  (l) The learned counsel also relied upon the
following decisions:

 (i) AIR 1936 Bombay 99 (Lallubhai Chakubhai Vs. Chimanlal & Co)

 (ii) Vol. XLIV (5) RPD 105 (Boyee Vs. Morris Motors Ld.)

 (iii) 1903 (20) RPC 225

 (iv) 1995 RPC 585

 (m) As far as the submission made based on prior art is concerned, the learned
senior counsel submitted that it is not merely similarity but also identity
should be shown and for that purpose placed reliance upon Vol.XXVI IOJ 78 and
1977 FSR 137 (Badische Anilin & Soda Fabrik AG (Distiller's) Application.

 35. The learned senior counsel by relying upon a report in a magazine viz.,
'Techno Treat' contended that a comparative study of the Respondent's product
with Honda patent, what is disclosed in the said magazine can be taken as how
the industry has understood the product as the report states that the twin plug
configuration in the Honda product was in a large bore engine as compared to the
Respondent's product in a small bore engine.

 36. The learned senior counsel by referring to the complete specification filed
by the Respondent dated 07.07.2003, submitted that the patent as claimed by the
Respondent related to an invention to improve the combustion characteristic of
an internal combustion engine with improved combustion capacity. By pointing out
the same, the learned senior counsel contended that the teaching of the patent
of the Respondent's invention was a combination of twin plug configuration in a
small bore engine with twin valve facility along with other allied provisions in
the engine in order to achieve improved internal combustion.

 37. The learned senior counsel contended that the Respondent made a search and
brought to the notice of the Patent Controller by pointing out that the Honda
twin plug was in a large bore engine and the Patent Controller was satisfied
with the differentiation while granting the patent after the submission of the
complete specification. The learned senior counsel by referring to Section 57 of
the Patent Act contended that the Statute provided for making necessary
amendments to the claim for better understanding of the invention. By referring
to the Honda Patent No.4534322 A1 the learned senior counsel contended that it
related to a large bore engine and 'V' type engine which cannot be construed as
a prior art.

 38. As far as the Honda Patent application 678 of 2001 dated 17.07.2001, the
learned senior counsel pointed out that the invention though related to an
engine with plurality of ignition plugs attached to the same combustion chamber,
the same is not comparable as the said engine was fitted with a water pump and
thermostat and also fitted with a radiator for a cooling system inbuilt in the
engine which is not comparable at all to the Respondent's patented product.

 39. As far as the AVL specification is concerned, the learned senior counsel by
referring to the report of the AVL engineers themselves pointed out that the
disadvantage of a three valve engine listed makes a specific reference to the
fact that big bore i.e. above 70 mm would only work with twin spark plug.

 40. As far as the allegation of infringement is concerned, according to the
learned senior counsel except the fact that the Appellant product is a three
valve in all other respect it matched with the Respondent's patented product
viz., twin plug, internal combustion engine with lean burn fuel. The learned
senior counsel therefore contended that the third valve which is a variant being
a cosmetic one and if such a variant is relied upon to escape from the
allegation of infringement, it must be shown to be a substitute or a different
way of doing the same thing. According to the learned senior counsel, the
variant did not in any way improve the ignition or the engine function and
therefore it has to be construed as a cosmetic one as it had nothing to do with
the invention of the Respondent.

 41. The learned senior counsel in his submissions stated that the teaching of
prior art not being the same, the injunction granted cannot be found fault with.

 42. On the balance of convenience, the learned senior counsel contended that
the Respondent's product came into the market three years prior to the
Appellant's product and that it had already achieved commercial success. The
learned senior counsel also contended that the product was recognised by the
entire filed in the automobile industry and more than 50% of the market is
possessed by the Respondent as compared to the Appellant's product which is yet
to be launched as the booking itself was announced on 13.12.2007, while
injunction was granted on 19.12.2007 and that when the Division Bench suspended
the injunction on 20.12.2007, there was a specific condition that the Appellant
will not claim equity later on.

 43. The learned senior counsel also relied upon the subsequent order of the
Hon'ble Supreme Court dated 18.01.2008, which set aside the order of the
Division Bench and ultimately the Appellant's motorcycle viz., 'FLAME' was
introduced in the market on 10.03.2007 with one spark plug alone.

 44. By referring to the above factors, the learned Senior counsel contended
that the Appellant's business is not in any way affected and therefore no
irreparable hardship would be caused to the Appellant by the grant of the
injunction. The learned senior counsel relied upon 1978 RPC 761 (Corruplast Ltd.
Vs. George Harrison (Agencies) Ltd.) and 1984 FSR 574 (Monsanto Company Vs.
Stauffer Chemical Co.) in support of his submissions.

 45. To meet the arguments of the learned senior counsel for the Respondent that
a strong prima facie case should have been made by the defendant to resist an
injunction, Mr.A.L.Somayaji, learned senior counsel by relying upon AIR 1980
Delhi 132 (National Research Development Corporation of India, New Delhi Vs. The
Delhi Cloth and General Mills Co. Ltd. and Ors.) stated that it is on the
plaintiff to show strong prima facie case and not on the defendant. Reliance was
also placed upon AIR 1997 Delhi 79 (Franz Xaver Huemer Vs. New Yash Engineers).

 46. By relying upon 1969 RPC 367 (Rodi & Weinberger Vs. Henry Showell) the
learned senior counsel contended that to allege infringement all the integers
should be shown to be present and that the Respondent failed to show that the
third valve is a variant and that the Respondent has also failed to show that in
the Honda Patent bore size is more than 70 mm while on the other hand the said
patent did not refer to any bore size and therefore the Appellant's stand based
on prior art was well founded.

 47. Again Mr.P.S.Raman, learned senior counsel also appearing for the
Respondent contended that what AVL teaches is that the third valve aids lean
burn, then again there was a good ground made out by the Appellant for a triable
issue and with that consideration, the grant of injunction was not justified.

 48. Having heard the learned counsel for the respective parties and before
considering the various submissions, it is worthwhile to refer to some of the
relevant provisions of Patents Act 1970 for the proper disposal of these appeals
viz.,

 (i) Sections 2(j), (ja), (l) and (m) talks of invention, inventive step, new
invention and patent which reads as under:

 "Section 2(j) "invention" means a new product or process involving an inventive
step and capable of industrial application;"

 "Section 2(ja) "inventive step" means a feature of an invention that involves
technical advance as compared to the existing knowledge or having economic
significance or both and that makes the invention not obvious to a person
skilled in the art"

 "Section 2(l) "new invention" means any invention or technology which has not
been anticipated by publication in any document or used in the country or
elsewhere in the world before the date of filing of patent application with
complete specification, i.e., the subject matter has not fallen in public domain
or that it does not form part of the state of the art;  "Section 2(m) "patent"
means a patent for any invention granted under this Act;

 (ii) Section 3 falling under Chapter-II mentions as to what are all not
inventions.

 (iii) Section 9 prescribes as to how and in what manner a provisional and
complete specification can be filed.

 (iv) Under Section 10(4) it is stipulated that every complete specification
should describe fully and particularly the invention and its operation or use
and the method by which it is to be performed. The sub-clause (a) to (d) of
10(4) reads as under:

 "Section 10(4) Every complete Specification shall--

 (a) fully and particularly describe the invention and its operation or use and
the method by which it is to be performed;

 (b) disclose the best method of performing the invention which is known to the
applicant and for which he is entitled to claim protection; and

 (c) end with a claim or claims defining the scope of the invention for which
protection is claimed;

 (d) be accompanied by an abstract to provide technical information on the
invention:"

 (v) Section 11 talks of priority dates of claims of a complete specification.
Sub-clause (7) with its first proviso to Section 11-A is to the following
effect;

 "Section 11-A (7): on and from the date of publication of the application for
patent and until the date of grant of a patent in respect of such application,
the applicant shall have the like privileges and rights as if a patent for the
invention had been granted on the date of publication of the application;
Provided that the applicant shall not be entitled to institute any proceedings
for infringement until the patent has been granted:"

 (vi) Examination of an application through an Examiner by the Controller to
call for a report as a result of the investigation made under Section 13 is
provided under Section 12 while the various aspects to be taken into account
while examining the application for a patent referred to under Section 12 to the
examiner is specified in Section 13.  (vii) Section 25 of the Act provides for
opposition of the patent either before or after the grant.

 (viii) Section 43 falling under Chapter VIII specifies the manner in which the
patent is to be granted.

 (ix) Under Section 45 of the said Chapter, it is specified that every patent
should be dated as of the date on which the application for patent was filed and
the said date should be entered in the register. Sub-clause (3) to Section 45
specifically states that no suit or other proceedings shall be commenced or
prosecuted in respect of an infringement committed before the date of
publication of the application.  (x) The grant of patent is also subject to
certain conditions as stipulated in Section 47 of the Act.

 (xi) The rights of the patentees has been stipulated under Section 48, which
reads as under:

 "Section 48. Rights of patentees.-- Subject to the other provisions contained
in this Act and the conditions specified in Section 47, a patent granted under
this Act shall confer upon the patentee---

 (a) where the subject-matter of the patent is a product, the exclusive right to
prevent third parties, who do not have his consent, from the act of making,
using, offering for sale, selling or importing for those purposes that product
in India;

 (b) where the subject-matter of the patent is a process, the exclusive right to
prevent third parties, who do not have his consent, from the act of using that
process, and from the act of using, offering for sale, selling or importing for
those purposes the product obtained directly by that process in India:"  (xii)
Section 57 falling under Chapter-X provides for amendment of application and
specification or any document relating thereto before the Controller.

 (xiii) Section 64 falling under Chapter-XII provides for revocation of patents
granted either before or after the commencement of the Act. The relevant part of
the said Section falling under sub-section (1)(e),(f),(j) and (m) reads as
under:

 "Section 64(1)(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;  Section 64(1)(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;

 Section 64(1)(j): that the patent was obtained on a false suggestion or
representation;

 Section 64(1)(m): that the applicant for the patent has failed to disclose to
the Controller the information required by section 8 or has furnished
information which in any material particular was false to his knowledge;"

 (xiv) Section 104-A(1) specifies about the burden of proof in case of suits
concerning infringement which reads as under:

 "Section 104-A(1): In any suit for infringement of a patent, where the subject-
matter of patent is a process for obtaining a product, the Court may direct the
defendant to prove that the process used by him to obtain the product, identical
to the product of the patented process, is different from the patented process
if,-- (a) the subject-matter of the patent is a process for obtaining a new
product; or

 (b) there is a substantial likelihood that the identical product is made by the
process, and the patentee or a person deriving title or interest in the patent
from him, has been unable through reasonable efforts to determine the process
actually used;

 Provided that the patentee or a person deriving title or interest in the patent
from him, first proves that the product is identical to the product directly
obtained by the patented process."

 (xv) Section 107 specifies the defence available in a suit for infringement
which reads as under:

 "Section 107: Defence, etc., in suits for infringement.-- (1) In any suit for
infringement of a patent, every ground on which it may be revoked under section
64 shall be available as a ground for defence.

 (2) In any suit for infringement of a patent by the making, using or
importation of any machine, apparatus or other article or by the using of any
process or by the importation, use or distribution of any medicine or drug, it
shall be a ground for defence that such making, using, importation or
distribution is in accordance with any one or more of the conditions specified
in section 47."

 49. Keeping the above provisions of the Patents Act in mind when we consider
the rival submissions of the parties, we are able to discern the following
uncontraverted facts viz.,

 (a) The Respondent's patent application along with the specifications was filed
on 16.07.2002. In the said application, the invention claim related to
improvement in the combustion characteristic of a single cylinder internal
combustion engine working on four stroke principle with two valves and with two
spark plugs.  (b) On 07.07.2003, the Respondent filed its amended complete
specification, wherein, it was claimed that the provision of pair of spark plugs
was an improvement of the prior art with one spark plug and that the provision
of two spark plugs improved combustion of lean mixture of fuel without affecting
the performance.  (c) On 13.08.2004, the International Search Report came to be
made which stated that the claimed invention cannot be considered novel or
cannot be considered of involving inventive step when the document is taken
alone in the light of the US Honda Patent No.4534322 A1 (MATSUDA) dated
13.08.1985. Subsequently, the Respondent filed the provisional / complete
specification on 08.11.2004 titling the same as an improved internal combustion
engine working on four stroke principle.  (d) Honda Patent No.4534322 is known
as US Patent MATSUDA dated 13.08.1985, the engine of which contained two spark
plugs with two valves. The details of the said patent as placed before the Court
did not specify the bore dia, but it was a 'V' type engine.

 (e) The Respondent's patent No. 195904 of 16.07.2002, came to be issued with a
date of sealing of 07.07.2005, declaring the invention as an Improved Internal
Combustion Engine working on four stroke principle and was published in Issue
No.28/2005 dated 29.07.2005.

 (f) The Appellant entered into a Technical Assistance Agreement dated
13.11.2000, with M/s. AVL, Austria for designing a new three valve cylinder head
with lean burn combustion system with a provision for twin plugs. The
consideration as stipulated in the agreement payable by the Appellant was fixed
at a sum of EURO 349.522. The agreed bore dia in the said agreement was 44 mm
and upwards with cylinder volume capacity of 75 cc and upwards with three valves
provision.  (g) The Appellant entered into a Technical Collaboration Agreement
with M/s. AVL, Austria on 10.06.2005.

 (h) The Appellant has filed his application for revocation of Respondent's
patent No.195904 before the Intellectual Property Appellate Tribunal, Chennai on
24.08.2007. In the grounds of revocation, the Appellant contended that the
subject matter of the patent specification stands anticipated, it is obvious, it
is not patentable and that the patent specification is not clear. In support of
its stand that the Respondent's patent stands anticipated, the Appellant relied
upon the Japan publication No.59-060056 published on 05.04.1984. For the ground
that the Respondent's patent was not new, the Appellant relied upon US Patent
No.4534322 of MATSUDA. For the contention that the Respondent's invention claim
was obvious and that internal combustion engine with two spark plugs was already
known, the Appellant relied upon various other existing patents.  (i) The
invention as claimed by the Respondent in the application filed in support of
the injunction application is usage of two spark plugs for efficient burning of
lean air fuel mixture in a small bore engine (bore size between 45 mm and 70 mm)
in order to provide improved combustion characteristic of lean air fuel mixture
burning as stated in paragraphs 11 and 14 of the affidavit filed in support of
the injunction application with specific averment in paragraph 34(i) to the
effect that its invention is spark plug centric and not valve centric.  (j)
There was a complete specification bearing No.678-2001, dated 17.07.2001 of
Honda Giken Kogyo Kavushiki Kaisha a Corporation of Japan claiming invention of
four stroke engine with plurality of ignition plugs exposed to the same
combustion chamber stating that it can be applied widely to any engine i.e.
without any restriction to the size of the bore.

 50. The sum and substance of the invention as claimed by the Respondent is a
small bore four stroke engine having twin spark plugs with two valves to achieve
efficient combustion on lean air fuel mixture.

 51. The teachings of the patent according to the Respondent is an improvement
in the combustion (combustion is the process of burning) of lean air mixture in
the small bore engine for improved fuel efficiency and emission characteristics
. According to the Respondent the arrangement of twin spark plugs in a small
bore engine is positioned in such a manner that efficient burning of lean air
mixture takes place to provide improved combustion and thereby there would be
high saving of fuel while at the same time without compromising on the
performance of the engine. It is further contended on behalf of the Respondent
that if the said teaching of the Respondent's patent is not in controversy, the
Respondent is entitled for the injunction as against the infringement of the
said patent.

 52. The infringement complained of is that the Appellant's 125 cc motorcycle
called "FLAME" contains a four stoke internal combustion engine in a small bore
lean air burn engine of size 54.5 mm to 53.5 mm possessing combustion of lean
air fuel mixture with two spark plugs located diametrically opposite. The
Respondent would therefore contend that the characteristics of the product of
the Appellant in its 125 cc motor cycle called "FLAME" having everything similar
and identical to that of the patented product of the Respondent except the three
valve arrangement and the third valve being a cosmetic one, the allegation of
infringement is fully established and consequently the injunction applied for
and granted by the learned Judge is justified.

 53. As against the above case pleaded by the Respondent, according to the
Appellant the first and foremost allegation of infringement as against the
Appellant cannot be accepted since the product of the Appellant is covered by
the concept of prior art, in so far as, it relates to twin spark plug
arrangement in an internal combustion engine and apart from the fact that the
provision of three valves in its internal combustion engine is by way of an
arrangement with M/s AVL, Austria makes all the difference in the working of the
engine.

 54. On behalf of the Appellant, it is strenuously contended that the three
valves arrangement in its internal combustion engine is not a cosmetic one nor a
variant. It is claimed that the US Honda Patent bearing No.4534322, no where
stipulates the bore size while on the other hand a reading of the said patent
discloses that in order to over come the disadvantage of effective combustion
process in a large bore, the invention of introduction of twin plug came to be
made for effective combustion process in an internal combustion engine, that
therefore the Respondent's claim of new invention while securing the Patent
No.195904 itself will not stand and consequently it would necessarily result in
the revocation of it, in its application filed before the Tribunal.

 55. As far as the stand of the Respondent that its patented product is plug
centric and not valve centric, the Appellant placed reliance upon the amended
complete specification dated 08.11.2004, wherein, after describing the nature of
its product and after making reference to the International Search Report which
pointed out that in the light of the US Patent No.4534322 A1, the invention
claimed by the Respondent cannot be considered novel or possess any inventive
step, the Respondent attempted to highlight the working of the product by
concentrating on the provision of two valve as against three valves pointed out
in the US patent and ultimately while summarising its invention in the form of a
claim gave thrust to the two valve arrangement for efficient burning of lean air
fuel mixture in a small bore engine which display the Respondent real claim
based on valve centric and not plug centric.

 56. According to the Appellant when the ultimate patent came to be
granted/sealed on 07.07.2005, after the amended final complete specification
dated 08.11.2004, it is no longer open to the Respondent to still contend that
efficient internal combustion of the lean air fuel mixture was due to twin plug
arrangement was a misnomer and therefore the patent granted itself cannot be
held to be valid as there is every likelihood of the said patent being revoked
in the Appellant's application for revocation before the Appellate Tribunal.

 57. One other factor referred to by the Appellant is the specific reference
made by the Respondent in its amended complete specification where while
referring to the US Patent No.4534322 A1, the Respondent while admitting the use
of two spark plugs in an engine with three valves made a statement that such a
provision was in a large bore engine with diameter of more than 70 mm as a known
prior art. According to the Appellant, such a statement contained in the amended
complete specification of 2004 was contrary to the specification contained in
the US patent and came to be made by the Respondent distortedly with a view to
overcome the hurdle pointed out in the International Search Report dated
13.08.2004 and consequently, the Respondent cannot be permitted to rely on the
patent and the alleged infringement by the Appellant for the grant of
injunction.

 58. When we analysis the above stand of the respective parties, we find in the
description of the US Patent No.4534322, in particular in the background of the
invention and the object of the invention a specific statement as found which is
to the following effect viz.,

 "....This in turn requires larger cylinder heads 106 and 108, precluding the
possibility of making the engine more compact."

Thereafter, while considering the object of the invention, it is stated that

 "The present invention is intended to overcome these disadvantages, by means of
a pair of cylinder heads, in a V type horizontal opposition engine, which have
spark plugs installed from the cam chain chamber side, bringing about
compactness as well as the ability to use the two heads together."

A reading together of the last part of the "background of the invention" and the
first part of the "object of the invention" as extracted above, it is quite
clear that the patented US invention contained several improvements including
the disadvantage of larger cylinder heads which was overcome by the patented
product and the same obviously means the provision of twin spark plugs with
three valve fitted in a small bore engine for efficient internal combustion
process.

 59. If such a reading of the US patent can be prima facie inferred, by a
reading of the said US patent No.4534322, we find force in the submission of the
Appellant that there is a ground available for the Appellant to be considered in
its application for revocation pending before the Appellate Tribunal. Besides,
the above position in regard to the Respondent's patent vis-a-vis US Patent No.
4534322, the contention of the Respondent that effective combustion process in a
lean burn air mixture was due to twin plug arrangement as highlighted in its
pleading requires to be examined with little more circumspection, in as much as,
a close reading of the amended final complete specification of the Respondent
dated 08.11.2004, discloses that the Respondent wanted to highlight more on the
twin valve provision rather than twin plug arrangement. It would be worthwhile
to extract some of the statements contained in the said amended complete
specification of the Respondent dated 08.11.2004 viz., "This invention relates
to improvement in the combustion characteristics of a two valve per cylinder
internal combustion engine working on four stroke principle....."

 "These engines are provided with two valves namely inlet valve and exhaust
valve. These valves open in a cavity in the cylinder head conventionally known
as combustion chamber. The valves are actuated by rocker arms....."

 ".....There are various methods known to improve the engine performance by
optimizing the combustion characteristics. Some of these are improved ignition
timing, improved combustion chamber design, improved valve timing and valve
angles etc."

 "The invented two valve per cylinder engine with improved combustion
characteristics for efficient air fuel mixture burning, essentially comprises of
a pair of spark plugs (21 & 22), sleeve (23), O rings (24 and 24a), cylinder
head (25), circlip (26) and sleeve cap (27)."

 "With reference to figure 2, the two valve per cylinder engine with improved
combustion characterises for lean air fuel mixture burning has two spark plugs
are located in the cylinder head 25 diametrically opposite to each other....."

 "The applicants have developed a two valve, per cylinder 150 cc capacity with
invented features of this application and the same has been evaluated....."

 "WE CLAIM:

 (1) An improved Internal Combustion Engine working on four stroke principle,
having two valves per cylinder, for efficient burning of lean air fuel mixture
used in engines wherein the diameter of cylinder bore ranges between 45 mm and
70 mm, characterized in that said Internal Combustion Engine comprises a pair of
spark plugs....."  (6) An improved Internal Combustion Engine working on four
stroke principle, having two valves per cylinder, for efficient burning of lean
air fuel mixture used in engines wherein the diameter of cylinder bore ranges
between 45 mm and 70 mm.....

 (7) An improved single cylinder Internal Combustion Engine working on four
stroke principle having two valves for efficient burning of lean air fuel
mixture used in engines wherein the diameter of said cylinder bore ranges
between 45 mm and 75 mm substantially as herein described and as illustrated in
the drawings accompanying the specification." (Emphasis added)

 60. Therefore in the original specification filed on 16.07.2002, the provision
of twin spark plugs as against the prior art engine with one spark plug was the
centric of the claim.

 61. In the amended complete specification dated 07.07.2003 also, the centric
point was the provision of two spark plugs for generating spark at two
predetermined location at the same time to enable the engine to run efficiently
resulting in decreased emission, decreased fuel consumption and good
drivability.

 62. It is relevant to note that after the filing of initial specification dated
16.07.2002, as well as the amended complete specification on 07.07.2003, the
International Search Report dated 13.08.2004, came to be issued pointing out
that the claimed invention cannot be considered novel or involving inventive
step in the light of the US Patent No.4534322 A1 and that thereafter making a
specific reference to the said US patent, the Respondent came forward with its
amended final complete specification dated 08.11.2004, giving more thrust to the
provision of two valves even while referring to the twin plugs configuration
which apparently appeared to have persuaded the Controller to grant the patent
and sealing on 07.07.2005.

 63. If such a prima facie conclusion is inevitable, we are constrained to state
that there is considerable force in the claim of the Appellant in contending
that the patent of the Respondent suffers from the vice of prior art and
obviousness.

 64. At the risk of repetition, it will have to be stated that the US Honda
Patent having twin plugs configuration, without specific reference to the bore
size with three valve provision granted on 13.08.1985, would certainly militate
against the claim of the Respondent based on its patent dated 16.07.2002, sealed
on 07.07.2005 in Patent No.195904. In all fairness, it would be appropriate for
the parties to workout their remedies in the application for revocation pending
before the Appellate Tribunal filed at the instance of the Appellant in order to
ascertain whether or not the grounds raised in the said application would render
the already granted patent in favour of the Respondent invalid. In as much as
Section 107 of the Patents Act enable the Appellant in a suit for infringement
of a patent to rely upon every ground on which it may be revoked under Section
64 as a ground of defence for the defendant, the parties can work out their
remedy in the suit as well.

 65. We are of the considered opinion that such grounds raised by the Appellant
in its application for revocation included the grounds viz., anticipated patent,
obviousness in the patent and the invention in the patent is not patentable. In
support of the ground that the patent stands anticipated, the Appellant relied
upon Japan Patent No.59-060056 dated 05.04.1984 and the characteristic contents
in the said publication to show that the Respondent patent contains the very
same characteristics. As far as the ground that the patent is not new, the
Appellant relied upon US Patent No.4534322 published on 13.08.1985, which again
was a specific ground raised in the present suit as well as in the application
for injunction. For the contention that the invention is obvious, the Appellant
relied upon several patents granted in 1938, 1989 and certain other publications
referred in detail in the application for revocation.

 66. Apart from the above analysis, when we consider the claim of valid patent
by the Respondent and the alleged infringement by the Appellant it will be
worthwhile to understand the teachings of the already patented product of the
Respondent and the claim of the Appellant in respect of the alleged infringed
product viz., 125 cc 'FLAME', we had an opportunity of making a reference to an
article written by a student of Rajiv Gandhi School of Intellectual Property
Law, IIT Kharagpur, Mr.J.Sai Deepak titled "SPARKS FLY AS TITANS CROSS PLUGS".
The said article throws much light on the working of the product of the patentee
viz., the Respondent and that of the Appellant. We deem it appropriate to
extract a few points expressed in the said article which reads as under:
".....Through its written description, Bajaj has explained in sufficient detail
the disadvantage of using a single spark plug, as opposed to using twin spark
plugs located preferably diametrically to each other (US patent 4177783 too
contains a similar arrangement). This is because of better-controlled ignition
timing in the latter and lesser time taken for the flame to travel during
combustion. It has specifically listed the merits of use of twin spark plugs in
a lean mixture (a mixture where the proportion of fuel in air is lesser when
compared to rich mixture).  The novelty according to Bajaj, also lies in the use
of a sleeve to protect the spark plug which is susceptible to exposure to
lubricating oil. Such being the case, the emphasis and the scope of protection
would be limited to use of twin spark plugs in a single cylinder with two
valves, one plug protected by a sleeve. It is interesting to note that of the
four patents cited in the International Search Report in the PCT application, 3
relate to inventions only on sleeve, and only one speaks of use of twin spark
plugs.  CC-VTi, on the other hand, predominantly is about even combustion of
fuel by altering the air-fuel mixture received by the 2 intake ports or valves.
Usually, a cylinder has one intake and one exhaust valve. Earlier, the charge
(air-fuel mixture) was either subjected to swirl or a tumble depending on the
load conditions and speed. The stirred or circumferential motion of charge in
the cylinder is called swirl, whereas a motion directed towards the axis of the
cylinder is called tumble. The former is used for a lean mixture and the latter
is used for richer mixtures at high speeds. Several patents on the use of these
phenomena exist. TVSs technology combines both these phenomena with 2 intake
ports, providing swirl and tumble simultaneously, making the design compatible
for both lean and rich mixtures. The degree of swirl would be greater for a lean
mixture and the degree of tumble for rich mixture. This design ensures even
combustion of fuel in all corners of the cylinder and is further marked by the
use of twin spark plugs, which as explained earlier, provides fuller combustion.
This shows that the points of emphases in the designs of both these technologies
differ considerably, notwithstanding the use of twin spark plugs in both
instances....." (Emphasis added)

 67. The distinction made out by the Author of the said article is quite
appealing and does not conflict with the facts pleaded by the parties before us.
By taking a clue from the said article, when the patented product of the
Respondent is considered, the granted patent is an improved internal combustion
engine working on four stroke principle. Accepting the stand of the Respondent
that with the placement of the twin spark plugs in the cylinder head on
diametrically opposite sides and the ignition points set in such a manner
resulting in improved internal combustion in a lean burn mixture, the claim of
the Appellant's in relation to its product viz., 125 cc 'FLAME' talks of even
combustion of fuel by altering the air fuel mixture received by the two intake
valves with the combination of swirl as well as tumble operated air fuel
mixture. In other words, while the Respondent's patented product of an improved
internal combustion engine is by virtue of the functioning of two spark plugs
due to its ideal location and the point of ignition in a lean burn operation,
the product of the Appellant though also with the provision of twin spark plugs,
the internal combustion was due to the receipt of air fuel mixture by the two
intake valves (one providing swirl action and another tumble action) with the
third valve being exhaust valve also providing effective internal combustion
with the combination of lean burn and rich burn mixture.

 68. Having regard to the nature of operation of the engine of the patentee
viz., the Respondent as well as the Appellant in such a descriptive manner viz.,
one by virtue of twin spark plugs and the other by virtue of receipt of air fuel
mixture through two different intake valves both by swirl and tumble operations,
as rightly observed by the author of the said article, the point of emphasis in
the description of the product of the Appellant as well as the Respondent differ
considerably notwithstanding the use of twin spark plug in both the
technologies. Viewed in that respect also we are convinced that the alleged
infringement of the Respondent's patent cannot be prima facie accepted.

 69. When we refer to the various decisions relied upon by the learned senior
counsel for the respective parties the following principles emerge viz.,

 (i) The validity of a patent can be challenged in a suit on various grounds of
revocation as set out under Sections 64 and 107 of the Patents Act.

 (ii) For the grant of interim injunction in a patent matter, the prima facie
validity of the patent should be shown and also the prima facie infringement
should be proved apart from the availability of balance of convenience and
irreparable loss.

 (iii) If the patent is a new one, mere challenge at the Bar would be quite
sufficient for the refusal of an interim injunction as compared to a fairly old
patent.

 (iv) Even in IPR cases, apart from prima facie case, balance of connivence and
irreparable injury, the mere registration of the patent alone would not be
sufficient and the Court must look at the whole case i.e. the strength of the
case of the plaintiff and the strength of the defendant.

 (v) Irrespective of the examination and investigation made under Sections 12
and 13 of the Patents Act, no presumption can be drawn as to the validity of the
patent and whether the application for revocation of patent is pending and when
serious controversy exist as regards the existence of an invention based on
prior art, the Court should be slow in granting the injunction.  (vi) There can
be no infringement if the opponent has proved the same result by a different
combination of different elements.

 (vii) The general rule in regard to the construction of the validity of a
patent is, that construction which makes it valid should be preferred rather
than the construction which rendered it invalid.

 (viii) Patent specification should intend to be read by a person skilled in the
relevant art but their construction is for the Court and to do so it is
necessary for the Court to be informed as to the meaning of the technical words
and phrases and what was the common general knowledge i.e., the knowledge that
the notional skilled man would have.  (ix) In construing an allegation of
infringement, what is to be seen is whether the alleged infringement has taken
the substance of the invention ignoring the fact as to omission of certain parts
or addition of certain parts.

 (x) While analysing a claimed invention, it is relevant to examine as to
whether the invention requires independent thought, ingenuity and skill,
producing in a distinctive form a more efficient result and there by converting
a comparatively defective apparatus into a efficient and useful one which, taken
as a whole, is novel.  (xi) Though the grant of patent by itself does not
guarantee its validity, it should be given some weight and significance while
considering the question of prima facie case and it is always open to the
defendant to question the validity of the patent.

 (xii) Though the claimed invention may consist of known factors, known integers
i.e. if by combination of such known integers if a new use has been discovered
that should be construed to have displayed inventive steps by way of ingenuity
and skill.

 70. By applying the above settled principles deduced from the decisions of both
English as well as Indian cases, we find that the Appellant's contention as
regards the validity of the patent is a matter for detailed investigation in the
main suit as well as in the application for revocation pending before the
Appellate Tribunal.

 71. Prima facie when we examine, as rightly set out in the article of Mr.J.Sai
Deepak, student of I.I.T. Kharagpur, the Respondent's patented product de hors
the fact that it has the already existing concept of twin plug operation in an
internal combustion engine, at the threshold we are not inclined even prima
facie to state that the validity of the patent is doubtful. The operation of the
invention as claimed by the Respondent appears to be plug centric one in as much
as having regard to the descriptive statement in the final complete
specification it will have to be held that the claim as set out therein if
accepted would spark the ignition with twin plugs in a four stroke engine of a
single cylinder with two valves specification produce improved internal
combustion in a lean burn mixture and the Respondent may well be justified in
its attempt to enforce its rights based on the said patent. Nevertheless, on
that score alone, we find it difficult to countenance the claim of the
Respondent that the Appellant's product specification have infringed its
patented right. Here again, we find considerable knowledgeable expression made
by the author of the article Mr.J.Sai Deepak, wherein, he has differentiated the
product of the Appellant as valve centric one in as much as the two intake
valves as claimed by the Appellant provides for combined air fuel mixture of
swirl and tumble action, with a separate exhaust valve in an internal combustion
engine of single cylinder with four stroke with the aid of twin plug provision.
The descriptive note of the author in stating that the Appellant's product is
predominantly of even combustion of fuel by altering the air fuel mixture
received by two intake ports or valves and that therefore the said technology
differs considerably with that of the Respondent is quite convincing.

 72. In this context, it will be worthwhile to refer to the AVL patent
No.196636, dated 25.05.2000 granted/sealed on 08.11.2006, which has been adopted
by the Appellant based on the Technical Assistance Agreement dated 13.11.2000,
Technical Collaboration Agreement dated 25.06.2004 and another Technical
Collaboration Agreement dated 10.06.2005 with AVL Austria. In fact, the Patent
Office of Government of India, Ministry of Commerce and Industry, registered the
name of the Appellant as a Licensee based on its agreement dated 09.10.2007,
with AVL LIST GMBH in respect of Patent No.196636 dated 25.05.2000, granted to
AVL LIST GMBH. In the provisional and complete specifications of AVL, the
operation of three valve system in a four stroke internal combustion engine has
been set out as under: "This is achieved in accordance with the invention in
that the fuel supply device is formed by a joint carburettor for both inlet
ports, with preferably the carburettor being arranged in the zone of the
branching of the inlet ports from the inlet pipe. As a result of the combination
between load charging port, volumetric port and a fuel supply device arranged as
a conventional carburettor, it is possible in a very simple manner to achieve a
controlled combustion in the combustion chamber with very low emission values
and very favourable fuel consumption. By using a conventional carburettor with a
double inlet port configuration with a volumetric port and a charge loading port
it is possible to make do without any complex electric and electronic devices.
Thus one can omit complex control and regulation apparatuses for injecting the
fuel, including the higher provision of energy. Carburettor technology moreover
offers the highest possible reliability and the additional advantage that the
dimensional volume, weight and costs of the internal combustion engine can be
kept very low.  In order enable the optional performance of a stratification in
the combustion chamber, it is provided for a further embodiment of the invention
that during the opening of the throttle device the charge loading port can be
opened at first and the volumetric port thereafter.

 The charge loading port has the task of providing the charge in the combustion
chamber with a momentum about the cylinder axis. It can be arranged as a
tangential or spiral port.

 It can be provided for on the basis of the concept that the charge loading port
which is arranged as a tangential or swirl port is provided with a larger length
then the volumetric port. If the charge loading port is arranged as a tangential
port, it is provided with only a low curvature and is strongly inclined towards
the valve axis and produces a flow which hits the cylinder wall tangentially and
leads to the formation of a strong swirling movement in the cylinder. The
volumetric or natural port is provided with a stronger curvature as compared
with the tangential port, but shows a lower inclination towards the valve axis.
It produces a stream directed approximately against the centre of the cylinder
which neither produces a marked swirling movement, nor a tumble movement.  The
throttling of the volumetric port ensures that the admission of the charge from
this port occurs with a lower impulse into the cylinder chamber than the air
supplied by the tangential port. The overall flow field in the cylinder chamber
is thus dominated by the unthrottled tangential port. The charge loading thus
produces a rapid, stable and even combustion. This leads to a lower
susceptibility to engine knock despite higher compression. This creates the
prerequisites for achieving high thinnability in order to achieve lower fuel
consumption. At the same time, compatibility for higher exhaust gas return rates
is increased, thus enabling a considerable decrease in Nox emissions."  In the
pleadings viz., the counter affidavit of the Appellant filed in O.A.No.1357 of
2007 in C.S.No.1111 of 2007 in paragraph 30, the Appellant has specifically
averred that its arrangement with AVL, Austria, the Appellant is as a Licensee
of Indian Patent No.196636, dated 25.05.2000. In the same counter affidavit in
para 39, the Appellant has explained about the operation of three valve
configuration in the internal combustion engine, the operation of which has been
patented in patent No.196636 dated 25.05.2000.

 73. Besides the above, the set of photographs filed by the Appellant in Volume
VIII of the typed set of papers which have been marked as Figures I to XIX also
discloses the marked difference as between the three valve configuration of the
Appellant and two valve configuration of the Respondent vis-a-vis the
positioning of the twin plugs in the respective engines which are quite visible.
The photographs are annexed as Figures I to XIX to this Judgment for ready
reference. The above referred to statements contained in the Indian Patent
No.196636, the terms of the agreement and the recognition of the Appellant as a
Licensee by the patent office read along with the stand of the Appellant in its
counter affidavit sufficiently demonstrate that the internal combustion process
in the Appellant product was not exclusively dependent on the twin plug
operation but was based on the three valve configuration in Patent No.196636
dated 25.05.2000. If such a conclusion can be arrived at even prima facie, we
are convinced that the stand of the Appellant is well justified. We therefore
approve the stand of the Appellant that the third valve is not merely a cosmetic
one.

 74. Our conclusion is also fortified by the statutory provision of the Patents
Act. A reading of the definition 'invention', 'inventive step' and 'new
invention' as defined under Section 2 (j), (ja) and (l) respectively, makes it
clear that the technical advance which had not so far fallen in public domain in
an industrial application and which was not obvious before its pronouncement,
such technical advance though may be miniscule in nature could still be
recognised as an invention and once it gets the seal of approval of the Patent
Authority by way of grant of patent, the same will have to be given its due
recognition. In the case on hand, the claimed invention of the Respondent in
respect of its patent No.195904 viz., improved internal combustion working on
four stroke principle with twin plug and two valves configuration merits its own
recognition by virtue of the patent dated 16.07.2002, with date of sealing on
07.07.2005 and is protected by the provision of the Patents Act in particular
Section 48. In the same manner, the Appellant as a Licensee of Patent No.196636
dated 25.05.2000, with date of sealing on 08.11.2006, in respect of its
invention of four stroke internal combustion engine with at least two inlet
valve and one exhaust valve also with twin plug configuration is entitled to be
recognised on its own merits with equal protection of the Patents Act in
particular Section 48.

 75. Our conclusion being prima facie for the purpose of dealing with an
Interlocutory Application of the Appellant as well as the Respondent, the
parties will have to workout their remedies in the revocation application of the
Appellant before the Appellate Tribunal and also while contesting the main suit
on merits at the time of its final hearing independent of whatever stated in
this Judgment. Operation of Sections 64, 104-A and 107 of the Patents Act will
have to be independently applied at the appropriate stage of the respective
proceedings.

 76. When we apply the law laid down in the various decisions cited before us,
as far as the validity of the patent is concerned, it is by now well settled
that the validity of the patent can always be challenged in the High Court on
various grounds for revocation as provided under Section 64 or the ground on
which the allegation of infringement is to be established as provided under
Section 104 and or could be defended under Section 107 of the Patents Act.

 77. In as much as we have held that the patent of the Respondent viz., patent
No.195904, dated 16.07.2002 and the claim of the Appellant as a Licensee of
patent No.196636 dated 25.05.2000 are prima facie valid in their respective
spears of invention, even applying the ratios laid down in the decisions
referred to in our Judgment, the parties are relegated to workout their remedies
at the appropriate stage in an appropriate manner while contesting the
revocation application before the Appellate Tribunal or at the time of the final
hearing of the main suit.

 78. As far as the ratio laid down to the effect that if a patent is a new one,
the Court are to be slow in granting interim injunction, we find that in the
case on hand, the Respondent's patent No.195904 came to be granted/sealed on
07.07.2005 and the launching of the Appellant's vehicle 125 cc 'FLAME' was
scheduled in the month of December, 2007. Moreover, as discussed in detail in
the earlier paragraphs, even the Appellant's vehicle contains four stroke
internal combustion engine with three valve configuration by virtue of the
licence it holds in respect of Indian Patent No.196636, dated 25.05.2000,
granted/sealed on 08.11.2006. In such circumstances, while it cannot be held
that the Respondent's patent No.195904 was too old, while at the same time the
fact that the Appellant was also supported with a valid patent as a licencee,
the grant of injunction does not call for in the facts and circumstances of this
case.

 79. Further applying the well laid down principle that when application for
revocation of a patent of the Respondent is pending before the Appellate
Tribunal and when such an application has been preferred on the ground of
existence of a prior art, obviousness and other formidable grounds as provided
under Section 64 of the Patent's Act, the Court should not grant injunction in
such cases. We hold that in the special facts and circumstances of the case,
grant of interim injunction cannot be sustained. According to the Appellant the
failure of the Respondent in its initial specification dated 16.07.2002 and the
amended specification of the year 2003, in not specifically referring to the
Honda Patent No.4534322 dated 13.08.1985, and making a reference to the said
patent after the International Search Report dated 13.08.2004 and that too by
making a statement that the said existing Honda Patent related to large bore
size and not with reference to a small bore are all grounds which require
detailed consideration on merits. The allegation of the Appellant that the
Respondent secured the patent by making a deceptive statement about the bore
size of the Honda Patent, requires a detailed investigation. Further it will
have to be stated that such an allegation of the Appellant cannot be rejected as
baseless or made without any substance. In such circumstances as held in various
decisions referred to above, the grant of interim injunction would be wholly not
justified.

 80. In the case on hand, the alleged infringement is in respect of the improved
internal combustion achieved by the Respondent in a four stroke engine of small
bore with twin plugs operations of lean burn fuel. In the decision relied upon
by the learned senior counsel for the Respondent reported in 1884 (6) RPC 49
(William Needham and James Kite Vs. Johnson and Co.) it has been held that there
can be no infringement if one has produced the same results by a different
combination of different elements, that is another and a different combination,
and is not either an improvement or anything else of the other and that it
should be wholly different. Applying the said principle as we have noted that
the Appellant's product is a four stroke internal combustion engine with two
inlet valves and one exhaust valve which application had its own special effects
in the operation of the internal combustion of the engine or in its improvement,
such an operation when supported by another valid Indian Patent No.196636 dated
25.05.2000, it will have to be necessarily held that the allegation of
infringement based on the Respondent's patent No.195904 dated 16.07.2002 by
itself cannot form the basis for the alleged infringement. In other words, we
are convinced with the teachings of the Respondent's invention of its Patent
No.195904 dated 16.07.2002 has been distinctively distinguished by the teaching
of the patent No.196636 dated 25.05.2000, which supports the alleged infringed
product of the Appellant and therefore the grant of injunction by the learned
Single Judge cannot be sustained.

 81. As far as the preposition that the patent specifications are intended to be
read by persons skilled in the relevant art, we have found that there is at
least one article by an enlightened student of Intellectual Property Law of
I.I.T. Kharagpur, which we have referred in detail in the earlier paragraphs,
where the Author was able to demarcate the distinctive features of the patented
product of the Respondent as well as that of the Appellant and by making a
reference to the descriptive distinction in the respective specifications of the
Appellant as well as the Respondent, we are quite convinced that even going by
the independent opinion of a person in the concerned field of art there is no
scope to restrain the Appellant by way of grant of interim injunction. In the
various other materials relied upon, we do not find a comparative analysis made
with particular reference to the respective patents of the parties.

 82. As far as the application of the concept of pith and marrow of the claim,
what is stated is that novel feature which is claimed to be essential would
constitute the pith and marrow. The novel feature in the invention of the
Respondent based on patent No.195904 dated 16.07.2002, varies in very many
respects in the novel feature of the Appellant's product based on patent
No.196636 dated 25.05.2000. While the acclaimed novel feature of the
Respondent's product is twin plug operation resulting in improved internal
combustion, the acclaimed novel feature in the Appellant's product is in the
operation of two intake valves with one exhaust valve providing a combination of
swirl and tumble operation of lean and rich air fuel mixture in its internal
combustion process of course with the aid of twin plugs. If the pith and marrow
of the Respondent and the Appellant are distinctively identifiable there is
absolutely no scope for grant of injunction as has been done by the learned
Single Judge.

 83. In fact in the decision reported in AIR 1930 PC 1 (Canadian General
Electric Co. Ltd. Vs. Fada Radio Ltd.) the Privy Council has held that slight
alterations or improvements may produce important results and may disclose great
ingenuity. When we apply the said law laid down in sustaining an invention, we
are convinced that the "invention" consisting of an "inventive step" at the
hands of the Appellant and the Respondent operate independently though in
respect of four stroke internal combustion engine with twin plug operation of
lean burn mixture.

 84. Therefore, while on the one hand the Respondent's patent having been
granted is to be accepted prima facie as a valid one, in the same breath, it
will have to be held that merely because such a valid patent is existing in
favour of the Respondent, that by itself, it cannot be held that the Respondent
has made out a strong prima facie case of infringement as against the Appellant.
We say so because we too find a distinctive feature of a different operation in
the Appellant's technology with three valve provision with twin plugs operation
and the said three valves operation of the engine produce distinctively
different result in its operation. To be more precise, while the twin plug
operation in the Respondent's internal combustion engine may have resulted in
improved internal combustion, the three valve technology of the Appellant also
with twin plug provision produce a distinctive product of its own, different
from the claimed invention of the Respondent.

 85. Such a distinction as between the patented claim and the infringed product
is well protected under the provisions of the Patents Act, as has been set out
in the various decisions we have no hesitation in holding that in the case on
hand, even while holding that the claim of valid patent at the instance of the
Respondent can be prima facie accepted, the alleged infringement as against the
Appellant cannot be held to have been made out at the instance of the
Respondent. Therefore, there is no case made out for grant of interim
injunction. However, taking into account of our observation that the controversy
can well be decided in the Suit or in the Revocation Application, we only state
that if the Respondent seeks for an early hearing of the Suit or the Revocation
Application, the learned Judge or the Tribunal, as the case may be, may decide
the Suit or the Revocation Application on its own merits uninfluenced by
whatever stated in this Judgment and may decide the case at an early date.

 86. In the light of our above conclusion, the question of balance of
convenience or irreparable loss does not come into play. Having regard to our
above conclusion, we hold that the Respondent is not entitled for an injunction
as applied for and the injunction granted by the learned Single Judge cannot
therefore be continued. Both the appeals stand allowed for the reasons stated
herein and the impugned common order of the learned Single Judge dated
16.02.2008, passed in O.A.No.1357 of 2007 in C.S.No.1111 of 2007 is set aside
and the application in O.A.No.1272 of 2007 in C.S.No.979 of 2007 stands allowed.
There will be no orders as to Costs. All the M.Ps. are closed.   (S.J.M.J.)
(F.M.I.K.J.)

                  18.05.2009

Index : Yes

Internet : Yes

kk

    S.J.MUKHOPADHAYA, J.

           and

      F.M. IBRAHIM KALIFULLA, J.

kk

          PRE DELIVERY JUDGMENT

 in O.S.A.Nos.91 & 92 of 2008

              18.05.2009