V.DHANAPALAN,J.
Appellant is the plaintiff in the suit for perpetual injunction to restrain the respondents/defendants from in any manner infringing Patent Nos.196333,198872 and 198869 as regards the Prosthesis manufactured and marketed by the appellant. Pending the suit, the appellant sought for an order of interim injunction in O.A.Nos.786 to 789 of 2007. The learned single Judge, considering the rival submissions made by the learned counsel for the parties and analysing the facts and circumstances of the case, rejected the applications filed by the appellant, not granting interim injunction. Aggrieved over the same, he has filed these appeals.
2. The case of the appellant is that he is engaged in developing and improving the concept of Limb Salvage, using Custom Prosthesis, to meet the anatomical and functional demands of a patient after excision of bone tumors. Prosthesis is an artificial substitute or replacement of a part of the body such as eye, facial bone, knee, leg, arm etc. Custom Prosthesis is a procedure, by which the diseased part is surgically removed and the skeletal defect is corrected using a metallic implant, known as Endo-Prosthesis. As a result of the research done in this field, the appellant, along with Dr.Mayilvahanan Natarajan, invented a wide range of Prosthesis for limb salvage surgery for different parts of the anatomy, known as Custom Mega Prosthesis, which is made of titanium alloy or medical grade stainless steel. The appellant, with the guidance of Dr.Mayilvahanan, is marketing and selling the various Custom Mega Prosthesis through another proprietary concern by name Arc Bio-Mechanical Engineers ever since 1992, by manufacturing titanium alloy made products, purchasing titanium from the first respondent/defendant, who is the sole producer of titanium products in the country. Dr.Mayilvahanan Natarajan is the co-patentee of the prosthesis, developed and marketed by the appellant. Using the said monopoly, the first respondent refused to supply titanium alloy for manufacture of medical applications.
3. The further case of the appellant is that he had been supplying 'CMP-KJP' to the fourth respondent, namely, Cancer Institute (W.I.A.), Regional Cancer Centre, Adayar, Chennai, on the clinical specifications of Prof.Mayilvahanan Natarajan. 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 virtually without any reason. The appellant came to know through a newspaper article on 13.02.2004 in the Hyderabad edition of 'The Hindu' that an operation had been done at the second respondent by which the cancer infected bone and knee joint of an eighteen year old boy was removed and replaced with the prosthesis developed by the first respondent's bio-medical division, by name "Apollo Midhani Prosthesis". Since the products were not readily available in the open market, the appellant had no idea whatsoever about the offence committed by the respondents as regards his intellectual property rights. While perusing the credentials of a candidate, who approached the appellant for employment in 2006, the appellant found that the candidate was a student in Bio-Medical Engineering from one of the Chennai based Colleges and had carried out a project work titled "Design of Custom made Hinge Knee Rotational Joint and its Study" during the year 2005-2006 under the supervision of one P.Amma Rao, Departmental Head of Bio-Medical Division of the first respondent. On going through the project papers of the said candidate, the appellant found that the project was on a Prosthesis, which was the absolute replica of the one invented by him, over which the appellant alone had subsisting patent and design registration, and, only thereafter, the appellant came to know of the infringement of his intellectual property rights over "CMP-KJP".
4. On noticing that respondents 1 to 4 were making, using, selling and distributing the patented "CMP" including "CMP-KJP" by infringing his monopoly rights, the appellant caused a notice dated 01.09.2006 to the respondents, expressing his shock about the first respondent producing and manufacturing the imitation of "CMP"and claiming itself to have first developed such Prosthesis in the whole of India. The appellant claimed that he was the sole manufacturer and supplying such technologically advanced and innovative "CMP" in the whole of India. In the circumstances, the appellant filed the suit and, pending the same, the applications were filed for injunction, as stated above.
5. Learned counsel for the appellant has relied on the following decisions:
(i) Lallubhai Chakubhai v. Chimanlal & Co., A.I.R.1936 BOMBAY 99 :
"The question of infringement of a patent is a mixed question of law and fact. A patent may be infringed in several ways, one of which is by using the invention or any colourable imitation thereof in the manufacture of articles or by putting the invention in practice in any other way....",
(ii) Raj Parkash v. Mangat Ram Chowdhry & Ors., AIR 1978 DELHI 1 :
"The grant of patent, no doubt, creates a monopoly in favour of the patent but then law throughout the free world recognises that an inventor must first get the benefit of his invention, even if it means creating a monopoly... The essential thing is that the inventor was the first one to adopt it. The principle, therefore, is that every simple invention that is claimed, so long as it is something which is novel or new, it would be a new invention and the claims and specifications have to be read in that light... A person is guilty of infringement, if he makes what is in substance the equivalent of the patented article."
(iii) Telemecanique & Controls (I) Limited v. Schneider Electric Industries SA, 2002 (24) PTC 632 (Del) (DB) :
"A monopoly of the patent is the reward of the inventor. Undoubtedly, patent creates a statutory monopoly protecting the patentee against any unlicensed user of the patented device and therefore the patent is entitled to injunction."
(iv) Wockhardt Limited v. Hetero Drugs Ltd. & Ors., 2006 (32) PTC (Mad.) (DB) :
"45....If the prayer for interlocutory injunction is disallowed in the instant case, the appellant would necessarily suffer an irreparable injury, considering the fact that the five year period would soon elapse and the loss likely to be experienced by the appellant would not be compensated in terms of damages or royalty..."
6. According to the first respondent, it is a Public Sector Undertaking company, registered under the Companies Act under the administrative control of the Department of the Defence Production, Ministry of Finance, for the manufacture of special metals and super alloys to meet the requirements of Defence, Aero Space, Atomic Energy, Electronics and other strategic industries. As a part of its service to the society, the first respondent had developed various Prosthesis having high strength but lighter in weight using Titanium material suiting to the needs of the Indian conditions at an affordable cost, which would be of great help, particularly in cancer cases. The first respondent received a letter dated 25.06.2007 from the Director of Cancer Institute, Chennai, the fourth respondent herein, urging them to make available world class titanium material Prosthesis on humanitarian grounds as "Human Right to Health and Well being" for implanting to the patients suffering from malignant bone tumours.
7. With reference to the allegation of the appellant that the first respondent had imitated the products of the appellant, the first respondent would submit that the history of Distal Femoral Prosthesis was started in 1982. It was first developed and manufactured by Howmedica Inc, Rutherford, NJ, USA. Same products were available from various orthopaedic companies. Therefore, it was not correct for the appellant to contend that he invented the wide range Prosthesis for limb salvage surgery for different parts of anatomy. To meet the requirement of cancer patients, Femoral & Tibial components were manufactured by the first respondent as an integral part equal to the resected bone and matching to the anatomy of the patients. There was no comparison of the features of the appellant's "CMP" with the first respondent's Hinged Knee Prosthesis. The first respondent was supplying Titanium and its alloy mill products to the appellant for several years i.e., from 1992. However, since 1997, the first respondent started its own supplies of Titanium implants and Prosthesis.
8. Referring to the development of "Apollo Midhani Prosthesis" in Titanium material, the first respondent states that it is unique in nature and developed in collaboration with the hospitals concerned and special variants were designed based on doctors/patients requirements. The basic design of the Prosthesis referred to by the appellant was the original design developed by the first respondent. The design of this respondent was improvised at the request of the fourth respondent to meet the specific requirement of the patients. In any event, the design of this respondent was totally distinct and different from that of the appellant. The appellant's products were sold around Rs.One lakh thirty six thousand, as against the first respondent's rate of Rs.39,200/-. Any injunction granted to the appellant for his commercial exploitation would strike a severe blow to the genuine cancer patients, since the Prosthesis developed by the first respondent for cancer patients was in no way comparable to the appellant's products. In spite of its strategic obligations to manufacture and supply the strategic materials to defence, space, nuclear sectors, etc., this respondent had chosen to serve humanity through the development of world class titanium implants and Prosthesis at affordable prices, which were hitherto imported at exorbitant rates. The titanium implants hitherto available only to super speciality hospitals are now made available to a common man at affordable rates. Under the circumstances, when the products developed, designed and technology adopted by the first respondent were distinct and different and in no way comparable with the products of the appellant and when the appellant had failed to establish a prima facie case in his favour, the applications for injunction were not sustainable.
9. The stand of respondents 2 and 3 is that they are unnecessarily dragged into the suit without any basis and, hence, the applications are liable to be dismissed for mis-joinder of parties. It is also their case that Apollo Midhani Process was developed for the sake of the patients with combined skills of the doctors from the second respondent hospital and engineers from the first respondent. This was done at the request of the patients and developed by the doctors completely free of charge. As such, the appellant could not maintain any suit for the alleged infringement of patent or design.
10. The fourth respondent's contention is that from the year 1988, Dr.Mayilvahanan, with the permission of the Government of Tamil Nadu, took charge of the limb conservation in bone tumours at the Cancer Institute. The contribution of Cancer Institute studies was acknowledged by Dr.Mayilvahanan in his books "Principles of Orthopaedic Oncology and Custom Mega Prosthesis and Limb Salvage Surgery". The Prosthesis supplied originally by the local company through Dr.Mayilvahanan was made on stainless steel. However, in the year 2000, Dr.A.P.J.Abdul Kalam, former President of India, during his visit to the institute, mentioned that Defence Research and Development Organisation (DRDO) was keen on contributing instruments of peace essentially in the area of health and that titanium could be used for Mega Prosthesis instead of stainless steel. Dr.Mayilvahanan had also mentioned in his book that titanium was stronger and lighter than stainless steel. The Titanium made Prosthesis results in a lesser degree of tissue reaction. It is light in weight and has greater tensile strength reducing the incidence of stress fractures. Sir Ratan Tata Trust funded the programme of the respondent from 1995 to 2004 to provide Prosthesis to the poor. Titanium alloy was available only with the first respondent. Hence, the appellant purchased the same from the first respondent. The Prosthesis made by the first respondent were out of Titanium alloy based on the design supplied by Dr.Mayilvahanan and supplied to the fourth respondent at affordable rates. Considering the advantage of titanium made prosthesis, particularly in the case of young patients, where stainless steel prosthesis posed disadvantages in a group of patients, Dr.Mayilvahanan made arrangements for an alternate source of supply. The guiding principle of the fourth respondent is "to cure where possible and relieve always" and that they are providing Prosthesis free of cost to the patients. The Prosthesis used by the fourth respondent is customised to suit the needs of the patients concerned. Five companies have been supplying these limb salvage devices for a long time. The claim of unique character of the products invented by the appellant is already in use by these companies and, as such, there is no novelty in the alleged invention.
11. Learned counsel for the respondents have cited the following authorities :
(i) M/s.Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, 1979 (2) Supreme Court Cases 511 :
"The invention patented by the respondent was neither a manner of new manufacture nor a distinctive improvement on the old contrivance, involving any novelty or inventive step having regard to what was already known and practised in the country for a long time before that.
The object of the Patent Law is to encourage scientific research, new technology and industrial progress and its fundamental principle is that a patent is granted only for an invention which must be new and useful, that is, have novelty and utility.
Mere collection of more than one integer or thing, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent.
The mere 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, in order that the mind may be prepared for what it is that the invention is to be claimed, for the patentee cannot claim more than he desires to patent..."
(ii) M/s.Niky Tasha India Pvt. Ltd. v. M/s.F.G.Gadgets Pvt.Ltd., AIR 1985 DELHI 136 :
"It is well settled, both in India and England, that an interlocutory injunction will not normally be granted where damages will provide an adequate remedy should the claim succeed. Furthermore, the Court will not grant an interlocutory injunction unless satisfied that there is a real probability of the plaintiff succeeding on the trial of the suit. Where the design is of a recent date, no injunction should be granted..."
(iii) Intas Laboratories Private Limited, Ahmedabad, v. Novartis A.G., Schwarzwaldallee, 2005 (1) M.L.J.309 :
"It would not be proper to decide the validity of the EMR granted in favour of the respondents/plaintiffs in appeal arising out of interim orders as the same would render the suit itself infructuous leaving nothing for trial, as any view, opinion or finding expressed in that regard would automatically be binding on the learned single Judge in the trial..."
(iv) The Bank of Tokyo Mitsubishi Limited v. Spartex Ceramics India Limited, 2007 (3) CTC 11 :
"Interim injunction which has the effect of granting final relief in suit at interim stage itself cannot be granted except under exceptional circumstances. Order which grants such relief without going into legal proposition involved in suit at interim stage suffers from legal infirmity."
12. Based on the above pleadings, we have heard the learned counsel for the parties and also gone through the records.
13. Firstly, it is to be stated that when a patent is granted, it is necessary to look into the obligations of the patentee. The said obligations are :
(1) A patentee has to work his inventions India on a commercial scale ;
(2) Without delay ;
(3) The works of patentee should not prejudice the interests of the public.
In this connection, it is also to be stated that if the above obligations are not fulfilled by the patentee, it may lead to granting either compulsory licence or revoking the said patent.
14. Keeping the above obligations in mind, the contention of the learned counsel for the appellant that it is the first respondent who makes the Titanium scarce and hence no fault could be attributed to this appellant for the non-supply cannot be accepted.
15. The appellant would submit that he, along with the co-patentee, has put in effort, time, money, energy and developed the product, which has been recognised by many institutions including the Ministry of Science and Technology, Government of India. As to the cost of Prosthesis of the first respondent at Rs.39,200/-, the appellant submits that the product referred to by the first respondent is without rotating hinged mechanism and that the product in titanium can be supplied at the same price.
16. As could be seen from the counter filed by the first respondent, the differences between the appellant's "Custom Mega Prosthesis" and those supplied by the first respondent are as under :
S.No.
Features of appellant's CMP Features of 1st Respondent's Hinged Knee Prosthesis i Polymer component as journal bearing No polymer component ii Rotating hinged mechanism No rotating hinged mechanism iii Use of extending mechanism No such mechanism.
Condylar Head and Femoral tem of the Midhani prosthesis is of a monolithic design manufactured as an integral part through a special forging process, in order to ensure superior strength and metallurgical reliability.
iv Use of pivotal hinge and thrust bearing pad mechanism Joint has to be hinged using hinge pin No thrust bearing pad.
17. The appellant also referred to the failure of the Prosthesis supplied by the first respondent, apart from the fact that the Prosthesis of the appellant has been acknowledged by the Chairman of the Cancer Institute, namely, the fourth respondent and given the chance to manufacture Prosthesis in commercial Titanium and not in Titanium alloy, the appellant would match the price of the first respondent at Rs.39,200/-.
18. Learned counsel appearing for the appellant placed reliance on various diagrams given by the appellant, the documents filed along with the plaint as well as the one shown by the first respondent to impress upon the fact that the the product marketed by the first respondent is the replica of the one marketed by the appellant. He pointed out that right from 1990, the appellant had been in the market and regularly supplying the same to the Cancer Institute and also referred to the purchase of Titanium in the year 1992 and the admission of the first respondent as regards the manufacture of Prosthesis. The learned counsel also submitted that the appellant is ready and willing to manufacture the product in pure Titanium, as required. He also highlighted the superior quality of the prosthesis supplied by the appellant. The mainstay of the learned counsel is that sheer monopoly of the first respondent in Titanium, by itself, will not give a licence to the first respondent to infringe the copyright of the appellant. He further pointed out that the patent is in respect of the product, being manufactured in Titanium Alloy ever since 1991, apart from surgical steel used by the appellant and the price aspect alone would not result in defeating the claim of the appellant to have an order of injunction in his favour.
19. Learned counsel appearing for the appellant also pointed out that the test in matters of this nature is on the similarities rather than on dissimilarities and, even to a naked eye, a look at the product produced before this Court by the appellant and the one by the first respondent clearly shows the similarity to speak about the infringement committed by the respondents.
20. The bottomline of the learned counsel for the appellant is that considering the fact that the appellant is proved to be the prior supplier right from 1991 on the face of the patent obtained as early as 1992; that on the admitted fact that the fourth respondent has been getting the supply only from the appellant, the product of the appellant is entitled to be protected by an order of injunction and that any order enabling the respondents to carry on the business would result in serious prejudice and harm to the business of the appellant and, hence, he prayed for an order of injunction.
21. Every prosthesis marketed is one to the requirement of specification given by the fourth respondent, or for that matter, any institution performing the surgery. Considering the fact that these Prosthesis is not tailor-made available off the shelf to anyone in open market, the violation alleged of the patent rights must necessarily be seen in terms of similarity of the products and the availability of the same in the open market to any particular customer needs. Further, the Prosthesis necessarily has to be custom-made to suit or fit in with the needs of a particular patient.
22. On going through the products produced before the Court, the learned single Judge observed that the basic technical details would show that they are not identical, or for that matter, deceptively similar and that the general content of the Prosthesis or the content or the functional aspect may be the same, yet the improvisation to make it functional, vis-a-vis the patients' needs, does not confer any such interest as an exclusive title owner on the appellant as a patentee to claim a right over the others. On analysing the manufacture and design of the product and the needs of the patients, the learned single Judge was of the prima facie view that the respondents did not violate the rights of the appellant, which, in our view, cannot be faulted with. We also concur with the view of the learned single Judge that issues like the cost factor or the appellant supplying prosthesis where the first respondent's product failed do not weigh in the matter of considering the allegation projected in the applications for granting interim injunction. Similarities and dissimilarities of the products are matters which have to be gone into technically only at the time of trial.
23. It is not denied by the appellant that he has been securing Titanium from the first respondent for the manufacture of Prosthesis and also that the prosthesis supplied by the first respondent was pure Titanium and the one supplied by the appellant was surgical steel/Titanium alloy.
24. 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 learned single Judge did not also find the balance of convenience in favour of the appellant to grant the interim injunction. Further, 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. In addition, since the products of the appellant and the first respondent were not appearing similar or identical at the initial stage of the proceedings, the learned single Judge was justified in not finding any positive factor tilting the balance of convenience in favour of the appellant. 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.
25. Furthermore, the issues involved herein are purely questions of fact, which can be effectively adjudicated at the time of final determination of the suit, after examining the parties and evidence. Therefore, it is open for the parties to put forth all the contentions raised in these appeals before the trial Court.
26. Though the learned counsel for the parties have cited a catena of decisions in support of their case, we are not inclined to go into the same, as the said decisions may be relied upon by the learned counsel before the trial Court, which may help in deciding the issue finally, but not at this stage.
27. For all the above reasons, these O.S.As. are dismissed. No costs.
28. Before parting with, we make it clear that any observations or opinion expressed in these appeals are only for the purpose of disposing of the appeals relating to grant of interim injunction and they shall, in no way, influence the trial Court while deciding the issues involved in the suit. In other words, the trial Court shall settle all the issues in the suit on the basis of the evidence on record, uninfluenced by the observations made in these appeals. Since the matter involved in the suit is of considerable importance, we direct the Registry to expedite the disposal of the suit, preferably within a period of four months.
dixit