Delhi High Court: In a patent infringement case Single Judge Bench of C. Hari Shankar, J. allowed the appeal preferred by defendants under Or. 39 R. 4 of the Civil Procedure Code, 1908 and held, that defendants are not liable of infringement of the registered patent.
➢ Dispute in this suit pertains to patent, granted by the Controller of Patents in respect of an Automatic Tube Cleaning System (ATCS) manufactured by the plaintiff. Allegedly the defendants introduced a similar invention as Anti-Fouling Condenser System (AFCS). Plaintiff ‘Eco Green Systems LLP’ (Ecogreen) is aggrieved by the misuse of the confidential information. It was the case of the plaintiff that predecessor-in-title of the plaintiff executed a confidentiality agreement with Carrier along with two other defendants Mr. Vanshaj and Mr. Ashish who were employed with Carrier at that time.
➢ Eventually, defendant 1 Mr. Vanshaj formed Limited Liability Partnership ‘EnerGeo Building Solutions’(Energeo), while he continued to be an employee of Carrier.
➢ Defendant 1 on behalf of Carrier continued the business and sought prices of the plaintiff’s product. He also sought drawings of Ball collector and Ball Trap of the patented product for different purposes.
➢ After the said information was received by the defendant 1, he resigned from the particular company. Later on, defendant 4 also resigned from the same company.
➢ Voltas addressed an e-mail to the plaintiff, seeking its best offer, to which Energeo, through its employee, enclosing the offer for the AFCS of Energeo, for use in the Central Vista Project.
➢ Subsequently, another company Voltas sought best offer of plaintiff’s patented product, to which defendant’s company replied to enclosing the offer of AFCS.
➢ Voltas addressed an email to defendant 1, enclosing the drawings of the plaintiff.
Misuse of confidential information
Plaintiff vehemently argued that sharing of the confidential information by Voltas with defendant 1 was in breach of the Confidentiality Clause in MoU between Voltas and Ecogreen. However, acknowledged the fact that the default in this regard, if any, would lie at the door of Voltas. Further he drew attention to the report of the Local Commissioner, appointed by the Court, which noted presence of plaintiff’s confidential drawings in defendants’ premises. On the contrary the defendants submitted they have never used or misused the confidential information and that they have created their own inventive faculties. It was also argued that data which, according to plaintiff was confidential and was misused, was already in the public domain and was, therefore, outside the scope of the Confidentiality Agreement between the plaintiff and Carrier.
The Court observed that it cannot possibly be alleged that defendants had, in any surreptitious fashion, come into possession of the confidential information of plaintiff. It was held that Voltas violated any Confidentiality Agreement with plaintiff so defendants cannot be blamed. It further noted that, “the clock could not have been put back. Knowledge, once learned, cannot be unlearned.”
The Court observed that plaintiff’s case is based on coincidences, and plaintiff is unable to establish the basis of contentions as to how AFCS had been designed by poaching on the confidential information of plaintiff. It was, hence, held that, “It is axiomatic, in law, that suspicion, howsoever grave, is no substitute for proof. Claims in commercial suits need evidence to back them up.”
It was the case of plaintiff that AFCS infringed the suit patent, as all essential elements of were replicated. The Court observed, that one needs merely to refer to Claim 9 in the suit patent, which already stands reproduced and which delineates, explicitly, the essential features of the claimed invention. Plaintiff contended that incidental differences between AFCS and ATCS notwithstanding, the pith and marrow of ATCS stand replicated in AFCS and it is a suitable case of patent infringement.
On the contrary, defendants argued that plaintiff has cherry picked elements from various claims in the suit patent to allege infringement. Plaintiff has nowhere sought to contend that the defendants’ AFCS had any counting system; a feature which was specifically identified by the plaintiff as conferring advantage to the suit patent vis-à-vis prior art. It was urged, that controlling logic of defendant’s AFCS, therefore, totally distinct and different from plaintiff’s ATCS. The manner in which plaintiff has mapped its claim itself indicates that there are some features of plaintiff’s suit patent which are not even present in defendant’s AFCS.
Differences and Similarities between ATCS and AFCS
Plaintiff relied on the report of Local Commissioner, who did not distinguish between ATCS and AFCS on the basis of the number of pumps, or the presence or absence of the ball counting system.
Essential of ATCS/ Plaintiff:
1. Two Collectors
2. Two pumps
3. One trap
4. One counting system
Defendant’s Impugned System:
1. One pump
2. No Counting System
3. No sorting system
The Court referred, the Doctrine of Pith and Marrow, which means that patent infringement requires copying only of the essential features of the suit patent; its pith and marrow, as it were. However, it was observed that question of applying the doctrine does not, arise in the present case as the plaintiff has, in explicit terms, in the complete specifications of the suit patent, set out, precisely, the essential features of the claimed invention.
In an infringement proceeding, the complete specifications of the suit patent are sacrosanct. Once the plaintiff has itself identified these features as essential to the suit patent, it stands estopped from contending that they are not essential, to substantiate the case of infringement that it seeks to make out against the defendant.
Patents are available only for inventions, and inventions have, statutorily, to incorporate an inventive step vis-à-vis prior art. The inventive step, therefore, is the very raison d’etre of the patent.
As all the above-mentioned elements of the subject matter patent were missing in the product of plaintiff, the Court declined relief of interim injunction.
Held, allegation of patent infringement, prima facie, devoid of substance.
[Ecomax Solutions Pvt. Ltd v. Energeo Building Solution LLP, 2023 SCC OnLine Del 2059, decided on 20-03-2023]
Advocates who appeared in this case :
For the Plaintiff: Aniruddha Valsangkar, Advocate;
For the Defendant: Sneha Jain, Advocate.