M.C.Jayasingh v. Mishra Dhatu Nigam Limited (MIDHANI) & Ors.

IN THE HIGH COURT OF JUDICATURE AT MADRASDATED :: 29-04-2009CORAMTHE HONOURABLE MR.JUSTICE S.J.MUKHOPADHAYAANDTHE HONOURABLE MR.JUSTICE V.DHANAPALANO.S.A.Nos.393 TO 396 OF 2007M.C.Jayasingh ...Appellant in all appeals-vs-1.Mishra Dhatu Nigam Limited (MIDHANI), represented by its Managing Director, Kanchanbagh, Hyderabad-500 058.2.Apollo Hospitals, Jubilee Hills Road, Banjara Hills, Hyderabad-500 033.3.Apollo Hospitals Enterprise Limited, Ali Towers, IV Floor, 55 Greams Road, Chennai-600 006.4.Cancer Institute (W.I.A.), (Regional Cancer Centre), Canal Bank Road, Gandhi Nagar, Adyar, Chennai-600 020. ...Respondents in all appeals.Appeals against the common order dated 21.09.2007 made inO.A.Nos.786,787,788 and 789 of 2007 in C.S.No.562 of 2007 on the fileof this Court. For appellant : Mr.M.SundarFor respondent 1 : Mr.V.ChandrakanthanFor respondents 2 & 3 : Mr.A.S.ChandrasekaranFor respondent 4 : Mr.RajahJ U D G M E N TV.DHANAPALAN,J.Appellant is the plaintiff in the suit for perpetual https://hcservices.ecourts.gov.in/hcservices/ injunction to restrain the respondents/defendants from in any mannerinfringing Patent Nos.196333,198872 and 198869 as regards theProsthesis manufactured and marketed by the appellant. Pending thesuit, the appellant sought for an order of interim injunction inO.A.Nos.786 to 789 of 2007. The learned single Judge, considering therival submissions made by the learned counsel for the parties andanalysing the facts and circumstances of the case, rejected theapplications 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 indeveloping and improving the concept of Limb Salvage, using CustomProsthesis, to meet the anatomical and functional demands of apatient after excision of bone tumors. Prosthesis is an artificialsubstitute or replacement of a part of the body such as eye, facialbone, knee, leg, arm etc. Custom Prosthesis is a procedure, by whichthe diseased part is surgically removed and the skeletal defect iscorrected using a metallic implant, known as Endo-Prosthesis. As aresult of the research done in this field, the appellant, along withDr.Mayilvahanan Natarajan, invented a wide range of Prosthesis forlimb salvage surgery for different parts of the anatomy, known asCustom Mega Prosthesis, which is made of titanium alloy or medicalgrade stainless steel. The appellant, with the guidance ofDr.Mayilvahanan, is marketing and selling the various Custom MegaProsthesis through another proprietary concern by name Arc Bio-Mechanical Engineers ever since 1992, by manufacturing titanium alloymade products, purchasing titanium from the firstrespondent/defendant, who is the sole producer of titanium productsin the country. Dr.Mayilvahanan Natarajan is the co-patentee of theprosthesis, developed and marketed by the appellant. Using the saidmonopoly, the first respondent refused to supply titanium alloy formanufacture of medical applications. 3. The further case of the appellant is that he had beensupplying 'CMP-KJP' to the fourth respondent, namely, CancerInstitute (W.I.A.), Regional Cancer Centre, Adayar, Chennai, on theclinical specifications of Prof.Mayilvahanan Natarajan. In spite ofthe fact that limb salvage surgery is continued in the CancerInstitute, all of a sudden, the fourth respondent stopped theplacement of order virtually without any reason. The appellant cameto know through a newspaper article on 13.02.2004 in the Hyderabadedition of 'The Hindu' that an operation had been done at the secondrespondent by which the cancer infected bone and knee joint of aneighteen year old boy was removed and replaced with the prosthesisdeveloped by the first respondent's bio-medical division, by name"Apollo Midhani Prosthesis". Since the products were not readilyavailable in the open market, the appellant had no idea whatsoeverabout the offence committed by the respondents as regards hisintellectual property rights. While perusing the credentials of acandidate, who approached the appellant for employment in 2006, theappellant found that the candidate was a student in Bio-MedicalEngineering from one of the Chennai based Colleges and had carriedout a project work titled "Design of Custom made Hinge KneeRotational Joint and its Study" during the year 2005-2006 under the https://hcservices.ecourts.gov.in/hcservices/ supervision of one P.Amma Rao, Departmental Head of Bio-MedicalDivision of the first respondent. On going through the project papersof the said candidate, the appellant found that the project was on aProsthesis, which was the absolute replica of the one invented byhim, over which the appellant alone had subsisting patent and designregistration, and, only thereafter, the appellant came to know of theinfringement 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" byinfringing his monopoly rights, the appellant caused a notice dated01.09.2006 to the respondents, expressing his shock about the firstrespondent producing and manufacturing the imitation of "CMP"andclaiming itself to have first developed such Prosthesis in the wholeof India. The appellant claimed that he was the sole manufacturerand supplying such technologically advanced and innovative "CMP" inthe whole of India. In the circumstances, the appellant filed thesuit and, pending the same, the applications were filed forinjunction, as stated above.5. Learned counsel for the appellant has relied on thefollowing decisions:(i) Lallubhai Chakubhai v. Chimanlal & Co., A.I.R.1936BOMBAY 99 :"The question of infringement of a patentis a mixed question of law and fact. A patentmay be infringed in several ways, one of whichis by using the invention or any colourableimitation thereof in the manufacture ofarticles or by putting the invention inpractice in any other way....", (ii) Raj Parkash v. Mangat Ram Chowdhry & Ors., AIR 1978DELHI 1 :"The grant of patent, no doubt, createsa monopoly in favour of the patent but thenlaw throughout the free world recognises thatan inventor must first get the benefit of hisinvention, even if it means creating amonopoly... The essential thing is that theinventor was the first one to adopt it. Theprinciple, therefore, is that every simpleinvention that is claimed, so long as it issomething which is novel or new, it would bea new invention and the claims andspecifications have to be read in thatlight... A person is guilty of infringement,if he makes what is in substance theequivalent of the patented article."(iii) Telemecanique & Controls (I) Limited v. Schneider https://hcservices.ecourts.gov.in/hcservices/ Electric Industries SA, 2002 (24) PTC 632 (Del) (DB) :"A monopoly of the patent is the rewardof the inventor. Undoubtedly, patent createsa statutory monopoly protecting the patenteeagainst any unlicensed user of the patenteddevice and therefore the patent is entitledto injunction."(iv) Wockhardt Limited v. Hetero Drugs Ltd. & Ors., 2006(32) PTC (Mad.) (DB) :"45....If the prayer for interlocutoryinjunction is disallowed in the instant case,the appellant would necessarily suffer anirreparable injury, considering the fact thatthe five year period would soon elapse and theloss likely to be experienced by the appellantwould not be compensated in terms of damages orroyalty..." 6. According to the first respondent, it is a Public SectorUndertaking company, registered under the Companies Act under theadministrative control of the Department of the Defence Production,Ministry of Finance, for the manufacture of special metals and superalloys to meet the requirements of Defence, Aero Space, AtomicEnergy, Electronics and other strategic industries. As a part of itsservice to the society, the first respondent had developed variousProsthesis having high strength but lighter in weight using Titaniummaterial suiting to the needs of the Indian conditions at anaffordable cost, which would be of great help, particularly in cancercases. The first respondent received a letter dated 25.06.2007 fromthe Director of Cancer Institute, Chennai, the fourth respondentherein, urging them to make available world class titanium materialProsthesis on humanitarian grounds as "Human Right to Health and Wellbeing" for implanting to the patients suffering from malignant bonetumours. 7. With reference to the allegation of the appellant thatthe first respondent had imitated the products of the appellant, thefirst respondent would submit that the history of Distal FemoralProsthesis was started in 1982. It was first developed andmanufactured by Howmedica Inc, Rutherford, NJ, USA. Same productswere available from various orthopaedic companies. Therefore, it wasnot correct for the appellant to contend that he invented the widerange Prosthesis for limb salvage surgery for different parts ofanatomy. To meet the requirement of cancer patients, Femoral &Tibial components were manufactured by the first respondent as anintegral part equal to the resected bone and matching to the anatomyof the patients. There was no comparison of the features of theappellant's "CMP" with the first respondent's Hinged Knee Prosthesis.The first respondent was supplying Titanium and its alloy millproducts to the appellant for several years i.e., from 1992.However, since 1997, the first respondent started its own supplies of https://hcservices.ecourts.gov.in/hcservices/ Titanium implants and Prosthesis. 8. Referring to the development of "Apollo MidhaniProsthesis" in Titanium material, the first respondent states that itis unique in nature and developed in collaboration with the hospitalsconcerned and special variants were designed based ondoctors/patients requirements. The basic design of the Prosthesisreferred to by the appellant was the original design developed by thefirst respondent. The design of this respondent was improvised atthe request of the fourth respondent to meet the specific requirementof the patients. In any event, the design of this respondent wastotally distinct and different from that of the appellant. Theappellant's products were sold around Rs.One lakh thirty sixthousand, as against the first respondent's rate of Rs.39,200/-. Anyinjunction granted to the appellant for his commercial exploitationwould strike a severe blow to the genuine cancer patients, since theProsthesis developed by the first respondent for cancer patients wasin no way comparable to the appellant's products. In spite of itsstrategic obligations to manufacture and supply the strategicmaterials to defence, space, nuclear sectors, etc., this respondenthad chosen to serve humanity through the development of world classtitanium implants and Prosthesis at affordable prices, which werehitherto imported at exorbitant rates. The titanium implants hithertoavailable only to super speciality hospitals are now made availableto a common man at affordable rates. Under the circumstances, whenthe products developed, designed and technology adopted by the firstrespondent were distinct and different and in no way comparable withthe products of the appellant and when the appellant had failed toestablish a prima facie case in his favour, the applications forinjunction were not sustainable.9. The stand of respondents 2 and 3 is that they areunnecessarily dragged into the suit without any basis and, hence, theapplications are liable to be dismissed for mis-joinder of parties.It is also their case that Apollo Midhani Process was developed forthe sake of the patients with combined skills of the doctors from thesecond respondent hospital and engineers from the first respondent.This was done at the request of the patients and developed by thedoctors completely free of charge. As such, the appellant could notmaintain any suit for the alleged infringement of patent or design.10. The fourth respondent's contention is that from the year1988, Dr.Mayilvahanan, with the permission of the Government of TamilNadu, took charge of the limb conservation in bone tumours at theCancer Institute. The contribution of Cancer Institute studies wasacknowledged by Dr.Mayilvahanan in his books "Principles ofOrthopaedic Oncology and Custom Mega Prosthesis and Limb SalvageSurgery". The Prosthesis supplied originally by the local companythrough Dr.Mayilvahanan was made on stainless steel. However, in theyear 2000, Dr.A.P.J.Abdul Kalam, former President of India, duringhis visit to the institute, mentioned that Defence Research andDevelopment Organisation (DRDO) was keen on contributing instrumentsof peace essentially in the area of health and that titanium could beused for Mega Prosthesis instead of stainless steel. Dr.Mayilvahanan https://hcservices.ecourts.gov.in/hcservices/ had also mentioned in his book that titanium was stronger and lighterthan stainless steel. The Titanium made Prosthesis results in alesser degree of tissue reaction. It is light in weight and hasgreater tensile strength reducing the incidence of stress fractures.Sir Ratan Tata Trust funded the programme of the respondent from 1995to 2004 to provide Prosthesis to the poor. Titanium alloy wasavailable only with the first respondent. Hence, the appellantpurchased the same from the first respondent. The Prosthesis made bythe first respondent were out of Titanium alloy based on the designsupplied by Dr.Mayilvahanan and supplied to the fourth respondent ataffordable rates. Considering the advantage of titanium madeprosthesis, particularly in the case of young patients, wherestainless steel prosthesis posed disadvantages in a group ofpatients, Dr.Mayilvahanan made arrangements for an alternate sourceof supply. The guiding principle of the fourth respondent is "to curewhere possible and relieve always" and that they are providingProsthesis free of cost to the patients. The Prosthesis used by thefourth respondent is customised to suit the needs of the patientsconcerned. Five companies have been supplying these limb salvagedevices for a long time. The claim of unique character of theproducts invented by the appellant is already in use by thesecompanies and, as such, there is no novelty in the alleged invention. 11. Learned counsel for the respondents have cited thefollowing authorities :(i) M/s.Bishwanath Prasad Radhey Shyam v. Hindustan MetalIndustries, 1979 (2) Supreme Court Cases 511 :"The invention patented by the respondentwas neither a manner of new manufacture nor adistinctive improvement on the oldcontrivance, involving any novelty orinventive step having regard to what wasalready known and practised in the country fora long time before that.The object of the Patent Law is toencourage scientific research, new technologyand industrial progress and its fundamentalprinciple is that a patent is granted only foran invention which must be new and useful,that is, have novelty and utility.Mere collection of more than one integeror thing, not involving the exercise of anyinventive faculty, does not qualify for thegrant of a patent. The mere way to construe a specificationis not to read the claims first and then seewhat the full description of the invention is,but first to read the description of theinvention, in order that the mind may be https://hcservices.ecourts.gov.in/hcservices/ prepared for what it is that the invention isto be claimed, for the patentee cannot claimmore than he desires to patent..."(ii) M/s.Niky Tasha India Pvt. Ltd. v. M/s.F.G.GadgetsPvt.Ltd., AIR 1985 DELHI 136 :"It is well settled, both in India andEngland, that an interlocutory injunction willnot normally be granted where damages willprovide an adequate remedy should the claimsucceed. Furthermore, the Court will notgrant an interlocutory injunction unlesssatisfied that there is a real probability ofthe plaintiff succeeding on the trial of thesuit. 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 thevalidity of the EMR granted in favour of therespondents/plaintiffs in appeal arising outof interim orders as the same would render thesuit itself infructuous leaving nothing fortrial, as any view, opinion or findingexpressed in that regard would automaticallybe binding on the learned single Judge in thetrial..."(iv) The Bank of Tokyo Mitsubishi Limited v. SpartexCeramics India Limited, 2007 (3) CTC 11 :"Interim injunction which has the effectof granting final relief in suit at interimstage itself cannot be granted except underexceptional circumstances. Order which grantssuch relief without going into legalproposition involved in suit at interim stagesuffers from legal infirmity."12. Based on the above pleadings, we have heard the learnedcounsel for the parties and also gone through the records.13. Firstly, it is to be stated that when a patent isgranted, it is necessary to look into the obligations of thepatentee. The said obligations are : (1) A patentee has to work his inventionsIndia on a commercial scale ;(2) Without delay ; https://hcservices.ecourts.gov.in/hcservices/ (3) The works of patentee should notprejudice the interests of the public.In this connection, it is also to be stated that if the aboveobligations are not fulfilled by the patentee, it may lead togranting either compulsory licence or revoking the said patent.14. Keeping the above obligations in mind, the contention ofthe learned counsel for the appellant that it is the first respondentwho makes the Titanium scarce and hence no fault could be attributedto 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 theproduct, which has been recognised by many institutions including theMinistry of Science and Technology, Government of India. As to thecost of Prosthesis of the first respondent at Rs.39,200/-, theappellant submits that the product referred to by the firstrespondent is without rotating hinged mechanism and that the productin titanium can be supplied at the same price.16. As could be seen from the counter filed by the firstrespondent, the differences between the appellant's "Custom MegaProsthesis" and those supplied by the first respondent are as under :S.No.Features of appellant'sCMPFeatures of 1st Respondent'sHinged Knee ProsthesisiPolymer component asjournal bearingNo polymer componentiiRotating hinged mechanismNo rotating hinged mechanismiiiUse of extending mechanismNo such mechanism.Condylar Head and Femoral tem ofthe Midhani prosthesis is of amonolithic design manufactured asan integral part through aspecial forging process, in orderto ensure superior strength andmetallurgical reliability.ivUse of pivotal hinge andthrust bearing padmechanismJoint has to be hinged usinghinge pinNo thrust bearing pad.17. The appellant also referred to the failure of theProsthesis supplied by the first respondent, apart from the fact thatthe Prosthesis of the appellant has been acknowledged by the Chairmanof the Cancer Institute, namely, the fourth respondent and given thechance to manufacture Prosthesis in commercial Titanium and not inTitanium alloy, the appellant would match the price of the firstrespondent at Rs.39,200/-. 18. Learned counsel appearing for the appellant placedreliance on various diagrams given by the appellant, the documents https://hcservices.ecourts.gov.in/hcservices/ filed along with the plaint as well as the one shown by the firstrespondent to impress upon the fact that the the product marketed bythe first respondent is the replica of the one marketed by theappellant. He pointed out that right from 1990, the appellant hadbeen in the market and regularly supplying the same to the CancerInstitute and also referred to the purchase of Titanium in the year1992 and the admission of the first respondent as regards themanufacture of Prosthesis. The learned counsel also submitted thatthe appellant is ready and willing to manufacture the product in pureTitanium, as required. He also highlighted the superior quality ofthe prosthesis supplied by the appellant. The mainstay of the learnedcounsel is that sheer monopoly of the first respondent in Titanium,by itself, will not give a licence to the first respondent toinfringe the copyright of the appellant. He further pointed out thatthe patent is in respect of the product, being manufactured inTitanium Alloy ever since 1991, apart from surgical steel used by theappellant and the price aspect alone would not result in defeatingthe claim of the appellant to have an order of injunction in hisfavour. 19. Learned counsel appearing for the appellant also pointedout that the test in matters of this nature is on the similaritiesrather than on dissimilarities and, even to a naked eye, a look atthe product produced before this Court by the appellant and the oneby the first respondent clearly shows the similarity to speak aboutthe infringement committed by the respondents. 20. The bottomline of the learned counsel for the appellantis that considering the fact that the appellant is proved to be theprior supplier right from 1991 on the face of the patent obtained asearly as 1992; that on the admitted fact that the fourth respondenthas been getting the supply only from the appellant, the product ofthe appellant is entitled to be protected by an order of injunctionand that any order enabling the respondents to carry on the businesswould result in serious prejudice and harm to the business of theappellant and, hence, he prayed for an order of injunction. 21. Every prosthesis marketed is one to the requirement ofspecification given by the fourth respondent, or for that matter, anyinstitution performing the surgery. Considering the fact that theseProsthesis is not tailor-made available off the shelf to anyone inopen market, the violation alleged of the patent rights mustnecessarily be seen in terms of similarity of the products and theavailability of the same in the open market to any particularcustomer 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 detailswould show that they are not identical, or for that matter,deceptively similar and that the general content of the Prosthesis orthe content or the functional aspect may be the same, yet theimprovisation to make it functional, vis-a-vis the patients' needs,does not confer any such interest as an exclusive title owner on the https://hcservices.ecourts.gov.in/hcservices/ appellant as a patentee to claim a right over the others. Onanalysing the manufacture and design of the product and the needs ofthe patients, the learned single Judge was of the prima facie viewthat the respondents did not violate the rights of the appellant,which, in our view, cannot be faulted with. We also concur with theview of the learned single Judge that issues like the cost factor orthe appellant supplying prosthesis where the first respondent'sproduct failed do not weigh in the matter of considering theallegation projected in the applications for granting interiminjunction. Similarities and dissimilarities of the products arematters which have to be gone into technically only at the time oftrial. 23. It is not denied by the appellant that he has beensecuring Titanium from the first respondent for the manufacture ofProsthesis and also that the prosthesis supplied by the firstrespondent was pure Titanium and the one supplied by the appellantwas surgical steel/Titanium alloy. 24. Considering the relevance of prosthesis to those who arein need of the same as a life saving equipment, its costeffectiveness and the functional advantage of a customised titaniummade prosthesis, the learned single Judge did not also find thebalance of convenience in favour of the appellant to grant theinterim injunction. Further, the affidavit of the appellant wasbereft of any details with regard to the loss suffered and likely tobe suffered by the appellant on account of the supplies by the firstrespondent. In addition, since the products of the appellant and thefirst respondent were not appearing similar or identical at theinitial stage of the proceedings, the learned single Judge wasjustified in not finding any positive factor tilting the balance ofconvenience in favour of the appellant. Given the fact that theproducts of the appellant and also the first respondent have theirown uniqueness vis-a-vis the requirement of the particular patients,a mere functional similarity does not lay a strong ground forgranting interim injunction.25. Furthermore, the issues involved herein are purelyquestions of fact, which can be effectively adjudicated at the timeof final determination of the suit, after examining the parties andevidence. Therefore, it is open for the parties to put forth all thecontentions raised in these appeals before the trial Court.26. Though the learned counsel for the parties have cited acatena of decisions in support of their case, we are not inclined togo into the same, as the said decisions may be relied upon by thelearned counsel before the trial Court, which may help in decidingthe 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 anyobservations or opinion expressed in these appeals are only for the https://hcservices.ecourts.gov.in/hcservices/ purpose of disposing of the appeals relating to grant of interiminjunction and they shall, in no way, influence the trial Court whiledeciding the issues involved in the suit. In other words, the trialCourt shall settle all the issues in the suit on the basis of theevidence on record, uninfluenced by the observations made in theseappeals. Since the matter involved in the suit is of considerableimportance, we direct the Registry to expedite the disposal of thesuit, preferably within a period of four months. Sd/-(S.J.M.J) &(V.D.P.J) 29.04.2009//Certified to be a true copy//Dated this the day of 2009. COURT OFFICERR.S/28.07.09From 25.09.2008 the Registry is issuing certified copies of theOrder/Judgment Decree in this format.