Sections 2(j), (ja), (l) and (m)
Section 10(4) sub-clause (a) to (d)
Section 11 Sub-clause (7)
First proviso to Section 11
Section 45. Sub-clause (3)
Section 47 of the Act.
Section 64 Sub-section (1)(e),(f),(j) (m )
Blog of Mr.J.Sai Deepak titled "SPARKS FLY AS TITANS CROSS PLUGS",
(http://spicyipindia.blogspot.com). Quoted with approval.
Doctrine of pith and marrow of the claim – Explained and applied. (Para 82.)
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. (Para 80.)
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. (Para 76)
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. (Para 79)
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. 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. (Para 82.)
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. (Para 84.)
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.