Prafulla C. Pant, J.@mdashThis suit is transferred to this Court from court of District Judge, Udham Singh Nagar, u/s 104 of Patents Act, 1970, after the counter claim along revocation was filed by the Defendants in the suit.
2. Heard learned Counsel for the parties at length on the application (6-C) moved under Order XXXIX Rule 1 and 2 read with Section 151 of Code of Civil Procedure, 1908, by Plaintiff and objections/reply 16-C, filed on behalf of Defendants No. 1 to 5 thereto.
3. Brief facts of the case, as alleged in the plaint are that Plaintiff-Acme Tele Power Limited has its registered office in Gurgaon and its factory is located in SIDCUL, Pantnagar (Uttarakhand). It is pleaded that Plaintiff manufactures products known as "Green Shelter" and "Compact Power Interface Unit" at its factory within the territory of State of Uttarakhand. The two products are purchased by and used in Telecom industry for efficient management of the temperature for telecom equipment at telecom towers. Defendants No. 1, 2 and 3, are also companies running business of manufacturing and supplying Green Shelters and Compact Power Interface Units allegedly by infringing the Plaintiffs intellectual property rights. It is further pleaded in the plaint that Plaintiff is committed to constant innovation and has spent huge capital and labour in inventing its products. The Plaintiff''s case is that Defendant No. 6-Mr. Sachidanand Patnyak, who is employee of the Defendants No. 1 to 3. was earlier employee of the Plaintiff. Defendant No. 6 who was Deputy Manager of the Plaintiff has access to the drawings of the Plaintiff used in manufacturing its products. It is alleged that in April 2006, he copied the drawings of Plaintiff and transferred them electronically to his personal e-mail identity. The two products of the Plaintiff namely Green Shelters and Compact Power Interface Units were the result of extensive research and development, as such, the application was moved by the Plaintiff for getting registered the patent. Consequently, the authority concerned granted registration of patent No. 197086 on 11-08-2006, for Power Interface Unit and No. 197108 on 08-09-2006, for Cuboidal shaped green shelter. By virtue of ownership of the above patents, Plaintiff has right to prevent all other persons from making, using, selling, offering to sell or importing the two products. It is alleged that the Defendants are infringing the valuable intellectual property rights of the Plaintiff by manufacturing and selling the same in the market. With these pleadings, Plaintiff instituted suit for permanent injunction. And this temporary injunction was filed in the suit.
4. Defendants filed their written statement and counter claim separately. In the written statement it is stated that Defendant No. 1 is manufacturing and marketing the various telecommunication instruments including Power Management Unit (also known as Power Interface Unit) and Telecom Shelter. However, Defendants No. 1 to 5, have denied that the two products are inventions of the Plaintiff company. According to the Defendants, alleged invention of Plaintiff are nothing but prior known art, which were in existence in public domain. It is pleaded in the written statement that the two products of the Plaintiff are mere arrangement/re-arrangement of the known devices and does not come under the description of inventions. It is alleged in the written statement that the Plaintiff has obtained the patent of the products voluntarily and Defendants have filed their opposition u/s 25(2) of the Patents Act, 1970. They informed the Plaintiff, through their attorney on 01-08-2007 that the opposition has been filed. It is further pleaded in the written statement that product of the Defendants are not copy of the product of Plaintiff. It is also alleged in the written statement that the material facts are concealed by the Plaintiff in the plaint. In this connection, it is pleaded that Plaintiff earlier filed suit No. 404 of 2007 against M/s Selvon Instruments Private Limited, New Delhi, in respect of patent No. 197086 before Delhi High Court where they failed to get any injunction in the matter. The Defendants have filed their suit No. 1453 of 2007 and 1543 of 2007, against the Plaintiff before Delhi High Court for declaration that the Plaintiff registration patent does not stand infringed. Also territorial jurisdiction of the court in Uttarakhand is challenged with the allegation that no part of cause of action has arisen within the territory of Udham Singh Nagar (Uttarakhand). Objection is also raised to the effect that the provisions of Order XXXIX Rule 3 of Code of Civil Procedure, are not complied with, before granting the ex-parte injunction.
5. In the counter claim it is prayed that the entries of registered patent No. 197086 and 197018 in favour of Plaintiff be revoked and cancelled.
6. Before further discussions, it is pertinent to mention that an ex-parte temporary injunction was granted by the trial court on 10-08-2007, i.e. District Judge, Udham Singh Nagar, where this suit was originally instituted. The said order was challenged by the Defendants by filing appeal against order (No. 412 of 2007), before this Court. Learned Single Judge of this Court vide order dated 01-10-2007, dismissed the appeal, leaving it upon the Defendants to file objections before the trial court against the application for temporary injunction. It appears that aggrieved by order, passed by another bench of this Court in A.O. No. 412 of 2007, the Defendants approached the Supreme Court and filed Special Leave to Appeal (Civil) No. 20925 of 2007. The Apex Court vide its order dated 26-11-2007, dismissed the petition and directed the parties to appear before District Judge, Udham Singh Nagar on 11-12-2007. The District Judge, Udham Singh Nagar, was directed to dispose of the application for temporary injunction on day to day basis. In compliance of the order, passed by Apex Court, the District Judge, Udham Singh Nagar, vide order dated 18-12-2007, after hearing the parties, affirmed the ex-parte temporary injunction, granted by it. Again, this time against the order dated 18-12-2007, appeal from order (No. 49 of 2008) was filed before this Court by the Defendants. After hearing the parties, A.O. No. 49 of 2008, was disposed of vide order dated 19-03-2008 by the bench presided by Hon''ble the Chief Justice, with following directions:
1. The suit in question along with counter claim for revocation and all applications including contempt application are transferred from the file of the District Judge to this Court. The registry shall take consequently action of summoning the report of the case.
2. The Temporary Injunction Application shall be listed on 1st of April, 2008, before the appropriate Bench at Serial No. 1 of the cause list above all other cases. No adjournment to any party shall be granted on any ground whatsoever. Specially, no adjournment shall be granted at all to the Plaintiff in the suit. It will be, therefore, upto the Plaintiff to ensure that adjournment is not asked for on any ground at all.
3. The Temporary Injunction Application shall be heard on day-to-day basis till the hearing is concluded.
4. The impugned order dated 18-12-2007 is set aside on the ground mentioned here in above, but the ex parte ad interim injunction granted on 10-08-2007, shall continue to remain in force until the fresh decision on Temporary Injunction Application.
The order dated 18-12-2007, is set aside vide order dated 19-03-2008, in which above directions are given on the ground that after revocation is filed by the Defendants, the court of District Judge had no jurisdiction to try the suit. And the suit was directed to be transferred to the High Court.
7. It is admitted fact that in respect of ''Power Interface Unit'' and ''Cuboidal Shaped Green Shelter'', products of the Plaintiff are registered with the patent authority under Patents Act. 1970, at serial No. 197086 and 197108 on 11-08-2006 and 08-09-2006. respectively. The Plaintiff''s prima facie case is accepted by the trial court at the stage of ex-parte injunction on its basis. It is also not disputed on the record that Defendant No. 6 Sri Sachidanand Patnyak. was employee of the Plaintiff company and before April 2006 and thereafter he joined the company of Defendant No. 1. This further prima facie supports the Plaintiff''s case that after he launched the aforesaid two products and was marketing them, the Defendants started producing the same since 2006. Both the parties have filed opinion and counter opinion of the experts in support of their cases. It is pertinent to mention here that the application was moved by the Plaintiff before the Patent authorities in the year 2004, for registration of its products. And the Defendants started production of Power Interface Unit and Power Management Unit and Telecom Shelter only in the year 2006. There is no dispute between the parties that no pre registration opposition was filed by anyone under Sub-section (1) of Section 9 of Patents Act, 1970. It is only after the Patent is registered that the Defendants filed their opposition before the authorities concerned under Sub-Section (2) of Section 25 of the Act.
8. Learned Counsel for the Defendants argued that Plaintiff''s products are nothing but workshop improvement, as there is no invention in it. In this connection, it is contended that combination of known existing devices cannot be said to be a new invention. In this connection, attention of this Court is drawn to Clause (d) and (f) of Section 3 of Patents Act, 1970. On the other hand, the Plaintiff replied that their product is not mere arrangement or rearrangement of the existing products working independently. According to the Plaintiff, rather it is a case of inter dependent devices, which have produced a new result in serving thousands of units of electricity which is more than the aggregation of the results of the existing products used in the final product. In other words, the Plaintiff claimed synergy from the products manufactured by them. This Court, at this stage is not required to answer as to whether products manufactured by the Plaintiff are not invention as defined under Clause (J) of Section 2 of the Patent Act or not, as the same is subject matter of the final decision of the suit. But this Court is of the view that the Plaintiff has been successful in showing prima facie case in his favour for temporary injunction.
9. On behalf of the Plaintiff reference is made to the cases of Synthon BV v. Smith Kline Becham (2005) UKHL 59 : (2005) All E.R. (D) 235, Electromedical Systems v. Cooper Life Sciences LEXSEE 34 F3D 1048, 1052 : 94 U.S. App. LEXIS 24657, Windsurfing Internation Inc v. Tabur Marine (1985) RPC 59. In re Anita DEMBICZAC LEXSEE 175 F3D 994 : 1999 U.S. App. LEXIS 8109,
10. Next point argued by Shri S.K. Bansal, learned Counsel for the Defendants is that the court of District Judge, Udham Singh Nagar, has no jurisdiction to try the suit. In this connection, it is contended on behalf of the Defendants that Plaintiff as well as the Defendants are residing outside the territory of Uttarakhand and no part of cause of action has arisen within the limits of this State. In reply to this. Shri R. Parthasarthv, learned Counsel for the Plaintiff submitted that Plaintiff''s factory is situated within the territory of District Udham Singh Nagar and by infringement of his patent, the production at the factory, situated at Udham Singh Nagar is affected, as such, part of cause of action has arisen in said District. Also, it is submitted on behalf of the Plaintiff that since the Defendant No. 6 transferred through e-mail technology from Udham Singh Nagar, as such, there is yet another part of cause of action, which has arisen within the State of Uttarakhand. Apart from this, it is also further submitted on behalf of the Plaintiff that the Defendants have already submitted to the territorial jurisdiction of District Judge, Udham Singh Nagar and this Court by filing the counter claim before District Judge, as such, it cannot be said that the court that passed temporary ex-parte injunction has no jurisdiction to try the suit or pass the said order. Since it is not disputed that the Plaintiff factory is situated within the District of Udham Singh Nagar, where the production is said to have been affected by infringement of patent right of the Plaintiff, as such, this Court does not see any jurisdictional error on the part of the trial court in passing the interim ex-parte injunction.
11. It is vehemently argued on behalf of the Defendants that the Plaintiff has suppressed the material facts from the court and it has not come with the clean hands, as such, he is not entitled to the relief of injunction. In this connection, it is contended that not only the fact relating to the ''opposition'' filed by the Defendants before the patent authority is concealed but also the fact that Plaintiff had been unsuccessful in getting the temporary injunction from Delhi High Court in suit No. 404 of 2007, is not disclosed. From the pleading of the parties, it is clear that said suit No. 404 of 2007, was filed against the another Defendant M/s Selvon Instruments Pvt. Ltd. Said party is neither pleaded to be agent of the present Defendants nor the present Defendants appear to be in anyway connected with Selvon Instruments Pvt. Ltd. As such, this Court is of the view that it was not necessary for the Plaintiff to disclose the fact. There may be cases where number of persons start infringing intellectual property right of a person and he may sue them at the places where whole or part of actions have arisen. As far as the pending ''opposition'' against the patent granted to the Plaintiff, filed by the Defendants u/s 25(2) of Patent Act, 1970 is concerned, certainly that is a material fact, which should have been disclosed in the plaint by the Plaintiff but learned Counsel for the Plaintiff has explained that on the day the plaint was presented before the District Judge, Udham Singh Nagar, by then, the Plaintiff had no knowledge of the opposition been filed by the Defendants against the patents in question. Learned Counsel for the Defendants drew attention of this Court to the legal notice sent by them through their attorney to the Plaintiff on 01-08-2007. However, on perusal of the record, it is not clear that when the notice issued by the attorney of the Defendants was actually received by the Plaintiff. The ex-parte temporary injunction appears to have been passed on 10-08-2007, since it is not prima facie clear that the Plaintiff had actual knowledge of the ''opposition'' filed by the Defendants before the patent authorities u/s 25(2) of the Patents Act, 1970, as such, it cannot be said at this stage with certainty that Plaintiff had concealed the material fact knowingly from the court. Shri S.K. Bansal, learned Counsel for the Defendants argued that the Defendants had filed caveat before Gurgaon court and Delhi High Court but the Plaintiff in a clandestine manner filed the suit at Udham Singh Nagar by adopting ''forum hunting''. Had there been no manufacturing unit of the Plaintiff in Uttarakhand and merely by stretching a part of cause of action on a particular case suit is filed, it could have been said that the Plaintiff in a clandestine manner obtained the temporary injunction. But that is not the case here. It is not disputed that the Plaintiff has a manufacturing unit within the district of Udham Singh Nagar. And as such, in the opinion of this Court the Plaintiff has been successful in showing that part of cause of action has arisen within the limits of District Udham Singh Nagar. The Court of District Judge, at Udham Singh Nagar had the jurisdiction u/s 20(2) of Code of Civil Procedure, 1908.
12. It is also pointed out by learned Counsel for the Defendants that no compliance of Rule 3 of Order XXXIX of the Code was made before passing the ex-parte injunction. However, said infirmity in the order cannot be given much weight after said ex-parte order has been affirmed by this Court in A.O. No. 412 of 2007 and the Apex Court has also not interfered with it.
13. Lastly, it is submitted on behalf of the Defendants that as per the plaint case, Plaintiff company had passed the resolution on 14-05-2007, for filing of the suit and the suit is actually filed in August 2007, after allegedly manipulating the expert reports in July and it is further submitted that it smells rat in filing of the suit at Udham Singh Nagar. In the opinion of this Court there is no illegality if the suit is filed after three months of passing of the resolution by the company in favour of its General Manager (Production) and meanwhile, in support of its case, expert evidence was obtained. On such technical ground the temporary injunction cannot be denied to the Plaintiff.
14. Having heard learned Counsel for the parties and after perusing the papers on record, I am satisfied that prima facie case balance, convenience and irreparable loss are shown on the record, in favour of the Plaintiff.
15. For the reasons as discussed above, without expressing any opinion as to the final merits of the case, the ex-parte temporary injunction granted in this suit, is affirmed for the period of pendency of this suit with the following conditions:
I. If the opposition filed u/s 25(2) of Patent Act, 1970, is allowed by the authorities concerned, this temporary injunction shall automatically stand vacated.
II. If the Plaintiff seeks unnecessary adjournment in the suit on that ground also this temporary injunction may be recalled.
Application for temporary injunction stands finally disposed of.
16. List this suit for framing of issues on 25-04-2008.
