3m Innovative Properties Ltd & Anr V/s Venus Safety And Health Pvt Ltd & Anr.

 

“The proper way to construe a specification is not to read the claims first and then see what the full description of the invention is”

 

[Case Brief] 3m Innovative Properties Ltd & Anr V/s Venus Safety And Health Pvt Ltd & Anr.

Case Name:

3m Innovative Properties Ltd & Anr V/s Venus Safety And Health Pvt

Case Number:

Criminal Appeal Number-10651 Of 2014

Court:

The Supreme Court Of India

Bench:

Justice Sanjeev Sachdeva, Justice Badar Durrez Ahmad

Decided On:

September 19, 2016

 

  • BRIEF FACTS AND PROCEDURAL HISTORY:
  1. The appellant No.1 claims to be a pioneer in personal protection equipment and is engaged in designing and manufacturing respiratory devices since 1972. The subject patent i.e. Indian Patent No.211175 for invention titled “Flat Fold Personal Respiratory Protection Devices and process for preparing the same” was granted in favour of the appellants w.e.f. 26.05.1999. The appellants claim to be manufacturing the product, claimed in the subject patent, since 2002. 
  2. The appellants filed the subject Suit contending that the respondents have recently started manufacturing a device identical to the device covered by the subject patent.
  3. Comparing the infringing device model V4410 of the respondents, the appellants contend that the said infringing device has been manufactured analyzing the subject patent and each of the elements of Claim 1 of the subject patent are present in the respondents‟ infringing device
  • PROCEDURAL HISTORY:
  1. The learned Single Judge has held that the respondents have been able to prima facie demonstrate the existence of various elements as prior art. He has held that it is an admitted position that the respondents have been using the impugned device since April 2011 and have made considerable investments in the same. 
  2. In this view of the matter, the balance of convenience has been found to be in favour of the respondents. The ex-parte ad interim injunction dated 19.12.2013 has thus been vacated. 
  3. It is contended that the learned Single Judge has erred in not appreciating that technical advances, made on account of inventive steps, have been taken as existing knowledge obvious to the person skilled in trade. It is further contended that mere challenge to the patent is not sufficient to non-suit a plaintiff but a credible challenge of a higher degree is required to non-suit a plaintiff, which is absent in the present case.
  4. It has been further contended that the learned Single Judge has erred in holding that it is an admitted position that the respondents have been manufacturing the infringing product since 2011.
  • ISSUE BEFORE THE COURT:
  1. Whether the comparison done by the learned single judge of the elements of the claim of the appellants in the subject patent with the alleged prior art satisfies the test as laid down by the supreme court of india?
  • RATIO OF THE COURT:
  1. The court contended that the Supreme Court in BISHWANATH PRASAD RADHEY SHYAM (Supra) also held that the proper way to construe a specification is not to read the claims first and then see what the full description of the invention is, but first to read the description of the invention, so that the mind may be prepared for what is claimed by the invention, because the patentee cannot claim more than what he desires to patent. The claims must be so construed as to give an effective meaning to each of them. The specification and the claims must be looked at and construed together.
  2. Since by the Impugned order, the learned single judge has held that the elements of the subject patent are taught by prior art and are obvious to a person skilled in trade, a comparison is required to be made of the elements of the subject patent with the alleged prior art.
  3. The court stated the pleat is formed by folding the material, which is generally supple, of the face portion of the mask. The pleats (referred to as lines of demarcation) are formed in the mask by means of folding the material. In the subject patent, the lines of demarcation are weld lines formed on the mask. The subject patent claims a nonpleated mask. Merely because the term “lines of demarcation” has been used in both the patents does not ipso-facto imply that both signify the same concept.
  4. The court refers to the two pictures of mask that was DI, D2, D3. The court first stated in D1 that in the subject patent, the bisecting fold extends across the first, the second and the third portion of the main body. The bisecting fold, in combination with the lines of demarcation, provides a rigid, off the face configuration of the mask to ensure conformity to the face of the wearer and to provide a facial seal thereby avoiding any outside air from entering the mask when worn.  D1 does not have any bisecting fold.  Various other distinguishing features also exist between the subject patent and D1.
  5. Perusal of the abstract of D2 along with its figure shows that the mask of D2 does not have any lines of demarcation. The mask is not divided into three portions which are movable along with the lines of demarcation. Mask of D2 is not a monolithic structure and is made by joining two symmetrical sides. A comparison of D2 with the subject patent shows that D2 does not teach the elements of the subject patent and, thus, could not have, prima facie, been considered as a prior art.
  6. The learned Single Judge has erroneously combined the abstract of D1, D2 and D3 to arrive at a conclusion that the three combined teach the elements of the subject patent. By reading the alleged prior art documents relied upon by the Respondents, a person ordinarily skilled in the art would not be able to reach to the solution provided by the subject patent without use of inventive ingenuity.
  7. The court stated that the burden on the respondents was not only to show that there is a challenge to the patent but they also had to show a higher degree of credible challenge, which according to court the respondents have failed to show.
  8. The court observed that the appellants have been able to show a strong prima facie case in their favour. The appellants have denied the assertions of the respondents that the appellants were aware that the respondents had been selling the impugned mask since 2011.  On the contrary, the assertion of the appellants is that they came across the respondent No.1‟s product on or about second week of August, 2014 and, immediately thereafter, the subject suit was filed.  Reliance is also placed on the catalogue available on the website of the respondent No.1 which refers to the infringing product as “New”.  
  9. The court contended that the balance of convenience also lies in favour of the appellants and against the respondents.
  • DECISION HELD BY COURT:
  1. At last the court stated that the appeal is allowed.
  2. The impugned order dated 30.05.2014 is set aside.
  3. The order dated 19.12.2013 is confirmed till disposal of the suit.

 

 

 

Leave a Comment

Your email address will not be published. Required fields are marked *