In M.C. Jayasingh v. Mishra Dhatu Nigam Ltd. & Ors. the division bench of the Madras High Court dismissed an appeal filed by the Appellant – Plaintiff against the decision of a Single Judge disallowing the interlocutory application of the Plaintiff.
The facts in brief are as follows: The Appellant – Plaintiff had filed an infringement suit against the Respondents – Defendants on the ground that the latter were infringing his patents for prosthesis, more specifically, Custom Mega Prosthesis – Knee Joint Prothesis (subsequently referred to as ‘CMP-KJP’). The prosthesis, made of titanium alloy or medical grade stainless steel, were manufactured and marketed by the Appellant as CMP – KJP and were used in limb salvage surgery.
In his infringement claim, the Plaintiff – Appellant stated that for manufacturing prosthesis he use to purchase titanium from the First Respondent – Defendant, Mishra Dhatu Nigam Limited (MIDHANI), who is the sole producer of titanium products in the country. Issues arose when, after a passage of time, the First Respondent refused to supply titanium alloy to the Appellant and post this refusal the First Respondent, in partnership with the Second Respondent, Apollo Hospitals, began to manufacture and sell prosthesis, marketed as “Apollo Midhani Prosthesis” to hospitals, including Apollo Hospitals. The Appellant became aware of the First Respondent’s alleged infringing activities through a newspaper report on such limb salvage surgeries conducted by doctors of Second Respondent, wherein it was stated that they purchased the prosthesis from the First Respondent.
Furthermore, the Appellant also contended that he had been supplying CMP-KJP to the Fourth Respondent, namely, Cancer Institute (W.I.A.), Regional Cancer Centre, Adayar, Chennai. However, in spite of the fact that limb salvage surgery is continued in the Cancer Institute, all of a sudden, the Fourth Respondent stopped the placement of order for the prosthesis virtually without any reason. Thus, presumably the institute was manufacturing and producing the concerned invention internally.
On these grounds, the Appellant contended that Respondents 1 to 4 were making, using, selling and distributing the patented CMP including CMP-KJP by infringing his monopoly rights and asked for an injunction against the Respondents.
The Respondents in turn challenged the validity of the patent and claimed that the prosthesis used by them was dissimilar to that of the Appellant’s. They further contended that their prosthesis was significant improvement over the Appellant’s version and was also more affordable. It is pertinent to note that the stated price difference was significant, the Appellants’s prosthesis cost Rs. 1,36,000/-, as against the First Respondent’s rate of Rs.39,200/-. Respondent No. 1 also argued that it was his titanium implants which made prosthesis, earlier available only in super speciality hospitals, affordable for the common man.
As stated earlier, the Single Judge dismissed the application for temporary injunction filed by the Appellant and the matter was being heard by the division bench on appeal.
The division bench applied the three parameters of (1) Prima Facie case (2) Irreparable Injury and (3) Balance of Convenience to the facts at hand and concluded that the Appellant failed to satisfy any of the criteria.
As regards prima facie case the court held that each CMP-KJP was made as per the specifications and requirements of the patient. Hence, the fact that the Appellant has patent over one model of CMP – KJP cannot entitle him to claim protection over variations of such model. Moreover, on examining the two models, the judges stated that the two models were visually dissimilar and functional similarity alone does not establish a prima facie case. It was stated that, “… since the products of the appellant and the First Respondent were not appearing similar or identical at the initial stage of the proceedings …. Given the fact that the products of the Appellant and also the First Respondent have their own uniqueness vis-a-vis the requirement of the particular patients, a mere functional similarity does not lay a strong ground for granting interim injunction.”
The fact that the bench decided the issue of prima facie case on visual similarity is rather unusual, given the fact that functional elements normally are predominant factors in deciding patent infringement suits. On the other hand, visual comparisons are more of a copyright and design parameter to determine infringement. However, their reasoning was probably directed by the public interest involved and the fact that a determination on the basis of functional similarity would grant the Appellant a very wide patent.
Next as regards balance of convenience the court opined that, “considering the relevance of prosthesis to those who are in need of the same as a life saving equipment, its cost effectiveness and the functional advantage of a customised titanium made prosthesis, … the balance of convenience [is not] in favour of the Appellant to grant the interim injunction.”
Lastly, the court also held that the Appellant did not satisfy the criteria of irreparable injury. They stated that, “the affidavit of the Appellant was bereft of any details with regard to the loss suffered and likely to be suffered by the appellant on account of the supplies by the First Respondent.”
On these grounds the court dismissed an appeal for an interim injunction.
The case is interesting given the emphasis laid on the public interest involved in access to prosthesis and the same being used as a ground to conclude that ‘balance of convenience’ tilted in favour of the Respondents, because of their ability to provide access to medicine to the public at large at an affordable price.
Furthermore, the question is, whether there a trend catching up in the judiciary wherein the ‘public interest’ factor is used to tilt the balance and decide an injunction application. This approach was also seen in the tarceva patent case, dealt with in earlier posts.
Finally, a rather disturbing trend in the judgment is that the judges kept confusing the intellectual property involved. Though concerned with patents, they spoke about infringement of copyright and design rights. Given the fact that they possibly confused standards applicable in deciding the existence of a prima facie case, the confusion in terms of the intellectual property being dealt with is rather undesirable.
SpicyIP would like to thank Sandeep Rathod for bringing this case to our attention. Also, I would like to thank Shamnad for his suggestions and inputs on this post.
i have no comments on all other aspects of the case, except for one regarding application of inappropriate standards/yardsticks and the imperfect understanding of the differences/nuances/principles of the various wings (copyrights, designs, patents, etc.) of IPRs by our hon’ble judges. It has happenned in many other cases matters and it seems that the same has happenned in this matter, too. I just hope that Indian judges learn to walk the IPR ropes faster. In fact, there is a strong case for developing a pool of judges specially trained in IPR matters, just as was done in UK (patent judges). There, even specialist lawyers were co-opted as patent judges for a brief period, whereafter they again went back to their legal practice. This practice, or other similar practice(s), tailor-made for Indian circumstances, should be explored in the inter-regnum, till we have a sizeable pool of specially trained IPR judges.
@ confusion in the type of IP… a Blooper on the MadHC website.. the Announcements and Notifications section has a marquee running..”recent Madras HC judgment on Trade mark”.. Curious me clicked on it just to find the TVS-bajaj patent verdict!!!
on a seperate… could you please post the details of the case no. etc.
Thanks!!!
‘public interest’ is more acceptable, palatable, in copyright matters rather than patents. For example, Hubbard v Vosper, Hydepark case etc.
@ Prima Facie – It is disappointing to notice the lack of insights in deciding the prima facie of this case. The admission of the court that the infringing device (obviously through its elements) performs the same function as the patented device, but is not visually similar to the device, puts into question the globally accepted means of determining infringement, i.e function/ way/ result test.
@ Public Interest – It is obvious that monopoly (as provided by patent law) and Public Interest are opposite concepts. Hence, the frequent use of establishing ‘public interest’ as grounds of rejection of injunction appears to be a deterrent to the patentee for enforcing his rights granted by the patent statute of this country.
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@ Divs: Thanks for your comments. The case is O.S.A. Nos.393 TO 396 OF 2007 decided on 29-04-2009. These are the only details I have.
@ mnbvcxzaq1: I’m not sure about creating a special cadre of judges. While it’s a good solution, there are pragmatic problems. For starters, due to the burden and backlog of cases in India, judges are already hard pressed for time. Thus, creating a special section of judges only to address IP matters would probably not be seen as something desirable.
@ARA: I disagree with the conception that public interest is more important in case of copyright as compared to patents. For instance, in cases of patented drugs and medicines, the ‘access to medicine’ debate is primarily based on public interest concerns.
Similarly, debates against granting software patents are based on public interest concerns.
@ KM: when you say that public interest and patents are opposed, it’s interesting to point out that when Jefferson insisted on introducing the copyright clause in the US Constitution his argument was that, if the inventor enjoys monopoly rights over his invention and is ensured of reasonable benefits from the same, then he’ll make the invention public. Consequently, the public will benefit from the invention.
Hence, though outdated now, when IP laws were introduced the idea was that IP would support and promote public interest.
Suchita Saigal,
well, what i suggested was just one of the ways. there can be many ways to solve the problem. n yet, none of the ways will ever be perfect/foolproof, no matter how u design them. even from your argument against me, i can derive support for my view – that since there is a huge backlog/burden of cases, its all the more imperative to have specially trained judges, who r more likely to dispose off cases at a faster rate. however, these r all speculative arguments/counterarguments. the reality is that all suggested solutions will ve some inherent defect/problems. n lastly, no one is listening, my dear friend, at least not the decision-makers. from my personal experience, i can tell u that v had suggested this very solution to the chief justice of a high court in a recent big-ticket patent matter, but despite the bench’s in principle agreement, what has come out? nothing.