Unfortunately, many of our readers pointed out to me that the post was not very clear in explicating either the facts or the legal issues arising therefrom. We therefore thought it fit to run this post clarifying key aspects of the case:
Firstly, the decision by Justice S.J. Vazifdar was not in relation to the main suit, but only disposed of an interim application dealing with the request for submission of additional documents by the Defendant.
To summarise the case, the plaintiff alleged infringement of its patent covering a tamper proof lock/seal for containers (incidentally, the main customers of this technology were pharma companies, Cipla, Dr Reddys and Merck: so perhaps this makes it yet another pharma patent case, alebit indirectly!).
Ex Parte Orders in Patent Cases?
At the initial stage, the defendant was not present and the plaintiff procured an ex parte (ad interim) order injuncting the defendant. As to how courts can grant ex parte orders in patent cases (which allegedly involve complicated issues of technology and claim scope determination) is beyond me! No doubt, courts routinely grant them in copyright and trademark cases:, and perhaps rightly so in some cases. Howver, to extrapolate the logic to patent cases and grant similar orders here is a big stretch–particularly since most patent cases are likely to involve an invaldity challenge and complicated issues of claim scope.
Forum Shopping and Trigger Happy Delhi Judges?
What is even more surprising is that this ex parte order comes from the Bombay High Court–a court that is not particularly known for granting ex parte orders in IP cases. And this explains why a number of IP owners creatively structure their plaint in such a way as to show some causal nexus with Delhi and bring actions before Delhi courts. Some cases seem to suggest that the moment a defendant has a website, Delhi courts would have jurisdiction–since the websie can be accessed in Delhi!. In short, given that most businesses today have a web presence, almost any defendant could be dragged before the Delhi Courts! Delhi courts are to IP owners in India what the Texas courts are to IP owners in the US.
Justice Bhat however seems keen on putting an end to this limitless stretch of jurisdiction principles.
Back to the facts of our case. Upon hearing of the ex parte injunction, the defendant approaches the court and prays that the injunction order be vacated. The court vacates the ex parte order and sets a date for a detailed hearing of the interim application . After hearing both parties, the court reserves judgment. In the meantime, the Defendant moves an application to bring on record further documents and to raise a new defence.
This application was heard by the judge on 3.6.2008, who then proceeded to reject the application. It is this decision (of rejection) that is the subject matter of this post as well as the earlier post, which unfortunately, was not very clear on these aspects. I’m not entirely sure if the decision on the interim application (which was reserved by the judge) has now been issued–a search on Manupatra did not yield any results. If any of our readers have more information on this case, please let us know.
Now back to this case and its bearing on the doctrine of equivalents. During the course of arguments before the judge, the defendant alleges that its product does not infringe since it differs in material particulars from the plaintiffs product and falls outside the scope of claims. The plaintiff however alleges that the defendant ought to be restrained under the doctrine of equivalents.
This is essentially a doctrine developed by US courts to catch defendant’s who make inconsequential changes to their products to avoid a “literal” infringement of the plaintiffs patent claims. In essence, this doctrine suggests that a defendants product will be held to infringe if it performs substantially the same function as the plaintiffs patented product in substantially the same way to yield substantially the same result. Tulzapurkar (counsel for defendant and one of the most sought after IP counsels in India) argued that “the Defendants device, even if held to perform the same function, to obtain the same result, did not function in substantially the same way as the Plaintiffs device”. Surprisingly, Tulzapurkar did not deny the application of the “doctrine of equivalents” in this case, a doctrine that has, to the best of my knowledge, never ever been endorsed by any Indian court. A doctrine that is largely a creature of US courts and followed in some way by courts of Japan and Germany (albeit with differences).
The UK allegedly does not follow this doctrine but treats “non literal” infringement cases by simply resorting to what they creatively call “purposive construction”. I’m guessing that given the nature of facts in this case and our propensity to rely more on British jurisprudence than American jurisprudence, the court is more likely to “purposively construe” the claims in question to catch the Defendants product as well. That way, Indian courts are spared the agony of explicating the scope of the doctrine of equivalents, that continues to be controversial in the US. We’ll bring you a guest post from Professor Josh Sarnoff who is quite critical of this doctrine and its application.
The judge in our case does not really pass any order explicating the doctrine of equivalents and whether or not the defendant infringes. Rather, he merely deals with this issue in passing–and going by the tenor of his discussion, it would appear that he is more inclined to hold in favour of infringement. Once again, it bears reiteration that the judge was only deciding on an application, whereby the Defendants sought to bring on record further documents and to raise a new defence. And not on the main interim injunction application. On this application (preceipe) itself, the judge holds:
“The matter was argued fully. The judgment was reserved. By a preceipe dated 29.3.2008 the Defendant sought to tender a further affidavit to bring on record documents allegedly discovered after the judgment was reserved. It was stated that the documents have been downloaded from the internet. This application was heard today. I see no reason to allow the further documents to be taken on record at this stage.”
ps: It is important to note that the decision deals extensively with “patents of addition”, a specific kind of patent mentioned in section 54 of the Indian Patents Act. But I’ll leave this separate discussion on patents of addition for another day. Also, it bears noting that the defendant did not counterclaim invalidity of the plaintiff’s patent (a critical aspect since many injunction decisions turn on invalidity challenges: the most recent high profile case being Justice Bhat’s order in Roche vs Cipla).
Not really. In Raj Parkash Vs. Mangat Ram Chowdhry and Ors. AIR 1978 Delhi 1..there was mention of equivalents resulting in infringement. Quoting from the judgment:
“(25)…. Unessential features in an infringing article or process are of no account. If the infringing goods are made with the same object in view which is attained by the patented article, then a minor variation does not mean that there is no piracy.”
“Suffice it to quote the words of Lord Denning, M. R. in Beecham Group Limited v. Bristol Laboratories Ltd. and another, 1967 (16) R.P.C. 406 (12) :-
“THE evidence here shows that in making hetacillin in the United States the defendants use a principal part of the processes which are protected here by the English patents. The importation and sale here is prima facie an infringement. There is a further point. A person is guilty of infringement if he makes what is in substance the equivalent of the patented article. He cannot get out of it by some trifling or unessential variation………….. On the evidence as it stands, there is ground for saying that hetacillin is medically equivalent to ampicillin. As soon as it is put into the human body, it docs, after an interval, by delayed action, have the same effect as ampicillin. In these circumstances, I think there is a prima facie case for saying there was an infringement. The process is so similar and the product so equivalent that it is in substance the same as ampicillin.”
“(26) … By trifle variations if the effect obtained by the defendants is the same, and we hold that it is the same, then according to the rule enunciated in the Ampicillin case, referred to above, there is a clear piracy. The idea of the plaintiff which is a novelty is clearly infringed.”
this might be one sole Indian case referring to DOE followed by one after 30 yrs.
Thanks Taapsi,
I guess you’ve overlooked a critical difference between the US and UK position in this regard, something that my post highlighted. Mangat Ram endorsed a UK principle (pith and marrow/immaterial variation etc) that is quite different from a “doctrine of equivalents” (DOE) principle articulated by US courts. To understand this difference, I suggest you read the House of Lords ruling in Amgen vs Hoechst Marion. I’ve extracted the key portions below this message.
In Ravi Kala, the plaintiff argued the DOE (as understood in the US context) and counsel for defendants, Tulzapurkar did nothing (at least on record) to highlight that our courts haven’t endorsed DOE–rather, we’ve at best endorsed a pith and marrow/immaterial variation principle from UK courts. The point of the post was to highlight that we shouldn’t automatically assume that US principles of DOE apply in India! A
Anyway, here is the extract from Amgen:
“At the time when the rules about natural and ordinary meanings were more or less rigidly applied, the United Kingdom and American courts showed understandable anxiety about applying a construction which allowed someone to avoid infringement by making an “immaterial variation” in the invention as described in the claims. In England, this led to the development of a doctrine of infringement by use of the “pith and marrow” of the invention (a phrase invented by Lord Cairns in Clark v Adie (1877) 2 App Cas 315, 320) as opposed to a “textual infringement”.
The pith and marrow doctrine was always a bit vague (“necessary to prevent sharp practice” said Lord Reid in C Van Der Lely NV v Bamfords Ltd [1963] RPC 61, 77) and it was unclear whether the courts regarded it as a principle of construction or an extension of protection outside the claims.
In the United States, where a similar principle is called the “doctrine of equivalents”, it is frankly acknowledged that it allows the patentee to extend his monopoly beyond the claims. In the leading case of Graver Tank & Manufacturing Co Inc v Linde Air Products Company 339 US 605, 607 (1950), Jackson J said that the American courts had recognised?
“that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such a limitation would leave room for – indeed encourage – the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law.”
In similar vein, Learned Hand J (a great patent lawyer) said that the purpose of the doctrine of equivalents was “to temper unsparing logic and prevent an infringer from stealing the benefit of the invention”: Royal Typewriter Co v Remington Rand Inc (CA2nd Conn) 168 F2nd 691, 692.
The effect of the doctrine is thus to extend protection to something outside the claims which performs substantially the same function in substantially the same way to obtain the same result.”
Thank you Sir! Definitely appreciate the points you made. i accept i hv found these three principles very over lapping and difficult to differentiate. And understand that there are some fine points of difference between the three. but i do feel one leads to another. will definitely try to clarify them at my end.