M/s.TVS Motor Company Limited v. M/s.Bajaj Auto Limited

determined in the revocation application filed by the Appellant, theRespondent is not entitled for the equitable relief of injunction asprayed for in the application.10. According to the Appellant, the argument of twin sparkplugs was in public knowledge after the expiry of the 20 yearsperiod of US Honda Patent No.4534322, dated 13.08.1985, besides theconstruction of three valves configuration in the Appellant's enginewas protected by the patent granted to AVL which again is covered byUS Patent No.6520 146 and Indian Patent No.196636, which has beenaccepted and not challenged. In other words, according to theAppellant, the use of twin spark plugs in its engine with threevalves resulting in combustion of lean air fuel mixture cannot betaken to have infringed the so called invention of the Respondentunder patent No.195904 as the same was hit by prior art, apart fromthe special characteristics of three valves in the Appellant'sengine.11. The Appellant specifically denied the stand of theRespondent that the third valve in the Appellant's engine was acosmetic one and contended that the said valve has its own specificfunctions in the operation of its IC engine for better combustionefficiency and therefore the alleged infringement of the Respondentpatent cannot be accepted.12. By making a specific reference to the claim made by theRespondent in the complete specification filed by it before theauthorities in 2004 and with regard to the provision of twin sparkplugs as compared to the averments contained in the affidavit filedin support of the injunction application, the Appellant pointed outthat what was claimed in the complete specification varies with whatis claimed in the application filed in support of the injunction andthat the Respondent cannot be permitted to improve the functions asmentioned in the complete specification by making any statement inthe affidavit filed in Court. In other words it was contended thatthe Respondent will have to stand or fall by what is stated in thecomplete specification in regard to the specific functions of thetwin spark plugs which according to the Appellant was only relatedto its position in the engine and not in relation to its advantagein making the combustion of lean air fuel mixture.13. It is stated that the shift made by the Respondent from twoplugs centric description of 2003 to two valves centric descriptionof 2004 was due to the existing discovery of 1985 US Honda patentand such being the case, according to the Appellant, the Respondentcan never be permitted to shift its claim once again to twin sparkplugs centric description to its so called invention. 14.The Appellant also placed reliance upon the Indian Patent https://hcservices.ecourts.gov.in/hcservices/ application No.678/MUM/2001 filed by Honda in July 2001 in supportof its stand that plurality of ignition plugs to four stroke enginewith an intake valve and an exhaust valve to achieve reduction offuel cost was a known factor in the automobile industry.15. By relying upon the patent granted to AVL, the Appellantcontended that the third valve is not a cosmetic addition but had aspecific purpose, in as much as, it is supported by the grant ofpatent by the authorities and that a contra statement of theRespondent would go against the patent which is not permissible inlaw. It is claimed that the two inlet valves provided in theAppellant's engine are different from each other and have a specificand independent function to each other. The Appellant would furthercontend that though the registration of Respondent's patent in 2005would date back to the original date of application since it being anew one and that its validity is the subject matter ofcancellation / revocation, claim for injunction should not have beencountenanced. It was therefore contended that the injunctionapplication was liable to be rejected.16. While dealing with the respective applications of theAppellant as well as the Respondent for interim injunction, thelearned Judge by an interim order dated 16.02.2008, while grantinginterim injunction as prayed for by the Respondent in O.A.No.1357 of2007 in C.S.No.1111 of 2007, dismissed the Appellant's applicationNo.1272 of 2007 in C.S.No.979 of 2007.17. Aggrieved against the said common order of the learnedJudge, the Appellant has come forward with these appeals.18. Mr.A.L.Somayaji and Mr.P.S.Raman, learned senior counselsappeared on behalf of the Appellant and advanced arguments.Mr.C.A.Sundaram, learned senior counsel appeared on behalf of theRespondent made his submissions.19. Mr.A.L.Somayaji, learned senior counsel in his submissionsafter referring to the respective contentions contained in theaffidavit filed in support of the application in O.A.No.1357 of 2007filed on behalf of the Respondent, the counter affidavit to the saidapplication as well as the rejoineder filed by the Respondentsubmitted that the exclusive right of patent claimed by theRespondent is hit by the vice of prior art, apart from the fact thatthe Appellant's product is not comparable to that of the Respondent,in as much as, apart from the formula of twin plugs, in theAppellant's engine there is an additional valve viz., third valve,that the third valve is not a cosmetic addition, but an essentialone and therefore there was no question of infringement in respectof the patent right of the Appellant. https://hcservices.ecourts.gov.in/hcservices/

20. The learned senior counsel also took the stand that theRespondent was making a flip-flop claim from the date of provisionalspecification made in 2002 and the final specification made in 2003as well as the complete specification made in 2004. According tothe learned senior counsel, the teaching of the patent wascompletely altered in the claims of the Respondent between the years2002 and 2003 viz., between the provisional claim and the finalspecification. According to him while in the provisionalspecification in 2002 and in final specification in 2003 theteaching was two plug centric of the invention, having noted thatthe Honda US patent No.4534322 A1 had already introduced two sparkplugs arrangement with three valves in a neutral bore engine, in thecomplete specification made in the year 2004 the Respondent switchedover to two valves specific description giving a go bye to the twinplugs centric description.21. The learned senior counsel in his submissions stated thaton infringement what is construed as a patent property and comparethe same with the alleged infringed product, the burden is heavy onthe plaintiff to establish the said factors.22. The learned senior counsel relied upon the followingdecisions in support his contentions :(a) Reliance was placed upon AIR 1982 SC 1444(Bishwanth Prasad Radhey Shyam Vs. H.M. Industries) inparticular paragraph No.17 to point out that patent isgranted only for invention which must be new anduseful i.e. it must have novelty and utility andtherefore essentially for a validity of the patent, itmust be the inventor's own discovery as opposed tomere verification of what was already known before thedate of the patent.The learned senior counsel by relying upon theratio of the decision as held in paragraph 33 in theabove said decision contended that even after thesealing of the patent, the validity of the patent canbe challenged in the High Court on various grounds forrevocation or infringement and that the presumption infavour of the validity of the patent cannot beaccepted.Again by referring to paragraph 44, the learnedsenior counsel contended that the specifications andthe claims must be looked at and construed together inorder to find out what was the invention as claimed inthe patent. https://hcservices.ecourts.gov.in/hcservices/ (b) The learned senior counsel then relied upon1948 (52) CWN 253 (Boots Pure Drug Co. Vs. May andBaker Ltd.) wherein the Division Bench of the CalcuttaHigh Court has held that in order to get an interiminjunction, the prima facie validity of the patentshould be shown that the prima facie infringement mustalso be proved apart from availability of balance ofconvenience. It was also stated therein that as arule of practice if a patent is a new one, a merechallenge at the Bar would be quite sufficient for therefusal of an interim injunction as compared to apatent which is fairly old and has been up into use,in which case, it would be safe for the Court toproceed upon the presumption of its validity. Thesaid principle was applied by the Delhi High Court inthe decision reported in AIR 1980 Delhi 132 (NationalResearch Development Corporation of India, New DelhiVs. The Delhi Cloth and General Mills Co. Ltd andors.)(c) The learned senior counsel then relied uponthe Division Bench decision of the Delhi High Courtreported in AIR 1997 Del 79 (Franz Xaver Huemer Vs.New Yash Engineers), for the proposition that even inintellectual property cases, the plaintiff has toprove prima facie case, balance of convenience andirreparable injury and that the registration of patentalone would not be sufficient and that the Court mustlook at the whole case i.e. the strength of the caseof the patentee and the strength of the defendant.(d) The learned senior counsel relied upon thedecision of the Calcutta High Court reported in AIR1996 Cal 367 (Hindustan Lever Ltd. Vs. Godrej SoapsLimited and Ors.) wherein a passage from the decisionof an English case reported in (1972) 1 All ER 1023(Hubbard Vs. Vosper) of Lord Denning is quoted whichis to the effect that while considering the grant ofan interlocutory injunction, the Judge should look atthe whole case and that he must have regard not onlyto the strength of the claimant but also to thestrength of the defendant.(e) The learned senior counsel then relied uponAIR 2000 Delhi 23 (Standipack Pvt. Ltd. and Anr. Vs.Oswal Trading Co. Ltd. etc.) for the proposition thatno presumption of validity is attached to a patentgranted by the Controller under the Act not https://hcservices.ecourts.gov.in/hcservices/ withstanding examination and investigation made underSections 12 and 13 of the Act. It was also reliedupon for the proposition that where an application isfiled seeking for revocation of patent and questionthe validity of it, the Court should not grant aninjunction more so when serious controversy exist asto whether or not the invention involves any newinventive skill having regard to what was known orused prior to the date of the patent.(f) Reliance was also placed upon 2005-BCR-3-191(Novartis AG Vs. Mehar Pharma) of the Bombay HighCourt wherein the settled principle of any matters togrant of interim injunction in relation to a patent,the party applied for it should satisfy that there isprobability of the plaintiff succeeding on the trialof the suit and when the patent is of a recent date,no interim injunction should be granted especiallywhen there is serious question as to the validity ofthe patent was raised by the defendant to be tried inthe suit.(g) The learned senior counsel then relied upon2006 (33) PTC 339 (NULL) (Dhanpat Seth and Ors Vs. NilKamal Plastic Crates Ltd.) the decision of theHimachal Pradesh High Court wherein the learned Judgeheld that by virtue of Section 107(1) of the PatentsAct, in any suit for infringement of patent, everyground, on which it may be revoked under Section 64,is available as a ground for defence. The saiddecision of the learned single Judge was affirmed by aDivision Bench in the decision reported in AIR 2008 HP23.(h) For the proposition that where the patent isof recent origin and its validity has not been tested,the Court should not grant injunction based on thealleged infringement, as well as, the ratio that meregrant of patent does not guarantee its validity,reliance was placed upon an unreported judgment of alearned Judge of Delhi High Court Mr.JusticeS.Ravindra Bhat dated 19.03.2008 in I.A.No.642/2008 inCS (OS) 89/2008 (F.Hoffmann-La Roche Ltd., & Anr. Vs.Cipla Limited). The said order of the learned singleJudge was also confirmed by the Division Bench in itsorder dated 24.04.2009 in FAO (OS) No.188 of 2008. Inthe case on hand, the Respondent obtained thecertificate of Patent No.195904 dated 16.07.2002 and https://hcservices.ecourts.gov.in/hcservices/ the sealing was made on 07.07.2005.(i) The learned senior counsel then relied upon aFull Bench decision of the Delhi High Court reportedin AIR 2000 Delhi 117 (Metro Plastic Industries(Regd.) Vs. M/s. Galaxy Footwear) wherein a provisionsimilar to Section 64 of the Patent Act as providedunder Section 51A and 53 of the Designs Act was dealtwith by the Full Bench and the Full Bench took theview that though no hard and fast rule can be laiddown, in the absence of an application forcancellation of the design such a right can beenforced and no defence can be taken based on a groundof cancellation. The Full Bench further ruled thatonce an application for cancellation has been madethen the Court can take into consideration all therelevant facts which would include the grounds raisedin the application for cancellation while consideringan application for grant of injunction and thatconsideration must be made judicial. 23. Mr.P.S.Raman, learned senior counsel also appearing forthe Appellant by referring to various provisions contained in thePatent Act took pains to point out by referring to the InternationalSearch Report which was passed on to the Respondent on 13.08.2004,to state that subsequent thereafter, the Respondent came forwardwith its amended Patent application on 08.11.2004, in which theclaim was two valves centric as against twin plugs centric asclaimed in the provisional specification made in 2002.24. The learned senior counsel by making a specific referenceto the stand of the Respondent in its amended final specificationmade in 2004 where specific reference has been made to US HondaPatent No.4534322 A1, pointed out that in the said amended claim,the Respondent highlighted the feature of two valves engine withimproved combustion characterises and there by gave a go bye to thetwin plug centric in the original specification of 2002. Thelearned senior counsel therefore contended that the above factorsmake it clear that the so called right of patent cannot be acceptedin as much as US Honda Patent No. 4534322 A1 of 1985 already coveredthe entire features as it was a prior art.25. The learned senior counsel by referring to the completespecification of the Honda company made on 24.01.2001, which wasmade 1½ years before the Respondent's application for patent viz.,16.07.2002, contended that the same was already teaching the twinplugs provision with three valves and four valves configuration.The learned senior counsel therefore contended that the exclusiveright claimed by the Respondent based on Patent No.195904 dated https://hcservices.ecourts.gov.in/hcservices/

16.07.2002, is open to challenge on very many grounds in theAppellant's application for revocation of the said patent underSection 64 of the Patents Act and therefore a prima facie case ismade out for a triable issue to cancel the said patent.26. The learned senior counsel by referring to the technicalcollaboration agreement of the Appellant with AVL, Austria underwhich the three valves engine of 75 cc capacity with 44 mm borehaving been permitted to be manufactured with its wholespecifications and when the product of the Appellant stand apartfrom the product of the Respondent with three valves configurationthere would be no question of infringement of the so called patentright of the Respondent. 27. The learned senior counsel while referring to the TechnicalCollaboration Agreement dated 13.11.2000, of the Appellant with M/sAVL, Austria contended that the Appellant had agreed for aconsideration of EURO 349.522 for designing the new 3-valve cylinderhead with AVL Controlled Combustion Burn Rate (CCBR Combustion)apart from a sum of EURO 409.000 by way of consideration for theTechnical Collaboration Agreement, and that the Appellant's productof 125 cc 'FLAME' motorcycle with three valve configuration is inno way comparable to the Respondent's patented product in PatentNo.195904 and therefore there can be no infringement even if theRespondent's patent was a recognised one.28. The learned senior counsel however by making a specificreference to the Search Report dated 08.06.2004, mailed on13.08.2004 pointed out that the Respondent's provisional patentapplication dated 16.07.2002, was rejected on the ground of priorart of US Patent No.4534322 A1 (MATSUDA) dated 13.08.1985 and thatin the subsequent complete specification dated 07.07.2003 and theamended final specification dated 08.11.2004, the Respondent shiftedits claim of twin plug centric into one of twin valve centric andtherefore there was a prima facie case made out for a triable issueto cancel the patent.29. The learned senior counsel drew our attention to the orderof the Hon'ble Supreme Court dated 03.03.2008, passed in C.S.No.1759of 2008 in support of his stand that having regard to the provisioncontained in Section 13(4) read with Sections 47 and 48 of thePatents Act especially by taking note of the effect of the counteraffidavit, the Hon'ble Supreme Court interfered with the order ofinjunction granted in favour of the party who already had the patentin its possession and while setting aside the order of the DivisionBench, the Hon'ble Supreme Court remitted the matter back to make ananalysis of the scheme of the provisions under the Patents Act andits effect on a registered patent. https://hcservices.ecourts.gov.in/hcservices/

30. The learned senior counsel therefore contended that havingregard to the facts pleaded by the Appellant vis-a-vis the patentgranted in favour of the Respondent, there can be every possibilityof the Appellant succeeding in its application for revocation of thepatent and therefore the injunction granted in favour of theRespondent is liable to be set aside.31. As against the above submissions of the learned seniorcounsel for the Appellant, Mr.C.A.Sundaram, learned senior counselappearing for the Respondent in his submissions stated that whileseeking for an order of injunction as against the Appellant what allrequired was the availability of a registered valid patent, balanceof convenience, irreparable loss and infringement by the Appellantunder the patent law.32. The learned senior counsel while transversing thesubmissions of the Appellant's counsel contended that in order toshow that the patent of the Respondent was invalid in law, it is thebounden duty of the Appellant to show that there was a prior artwith reference to the patent granted in favour of the Respondent.Highlighting his submissions, the learned senior counsel submittedthat to examine the question as to what is the patent that exist, itwould be relevant to see how the people in the industry look at theproduct patented and what the patent teaches.33. The learned senior counsel also contended that theconstruction of a validated patent must be accepted. As far as theprior art is concerned, according to the learned senior counsel whatcan be looked at in a prior art is the pith and marrow and oneshould not compare the complete and provisional specification forthat purpose. 34. The learned senior counsel relied upon the followingdecisions in support his contentions :(a) The learned senior counsel relied upon AIR1936 Bombay 99 (Lallubhai Chakubhai Vs. Chimanlal &Co.) where a learned Single Judge of the Bombay HighCourt held that ".....A patentable combination is one inwhich the component elements are so combinedas to produce a new result or to arrive atan old result in a better or moreexpeditious or more economical manner. Ifthe result produced by the combination iseither a new article or a better or acheaper article than before the combinationmay afford subject for a patent....." https://hcservices.ecourts.gov.in/hcservices/ ".....A specification must be construedimpartially, and the Court is generally slowto construe it against the patentee. Butthe construction must not only be a'benevolent', but a reasonable one.....""A patent may sometimes be infringed bytaking a part only of the invention, butthat depends upon the part for whichprotection is asked is a new and materialpart, especially in the case of acombination. If it is not new and material,the Court must consider what is thesubstance of the invention, and to do so ithas to consider the relative importance ofall the parts of the invention. Theessential part or the substance of theplaintiff's invention is, in his own words,the use of pressure, and therefore therecould be no infringement unless the use ofpressure by the defendants in their processwas proved......" (underlining is ours)(b) In the decision reported in 1884 (6) RPC 49(William Needham and James Kite Vs. Johnson and Co.)it is held as under:"Then comes the question, what is theinfringement of a combination of elements ina machine? There is not an infringement ifyou have produced the same results by adifferent combination of different elements.That is another and a different combination,and is not either an improvement or anythingelse of the other. It is absolutely andwholly different, if there is a differentcombination of different elements."(Emphasis added)(c) In support of the submission that what thepatent teaches should be analysed as was looked intoby the people in the industry viz., based on theknowledge of a skilled man and common generalknowledge, the learned senior counsel relied upon thedecision reported in 1998 RPC 727 (Lubrizol Corp. &another Vs. Esso Petroleum Co. Ltd and Others) whereit is held as under:"Patent specifications are intended to https://hcservices.ecourts.gov.in/hcservices/ be read by persons skilled in the relevantart, but their construction is for theCourt. Thus the Court must adopt the mantleof the notional skilled addressee anddetermine, from the language used, what thenotional skilled addressee would understandto be the ambit of the claim. To do that itis often necessary for the Court to beinformed as to the meaning of technicalwords and phrases and what was, at therelevant time, the common general knowledge;the knowledge that the notional skilled manwould have."(d) According to the learned senior counsel byvirtue of the amendment to Section 48 (2) (a) & (b) aprovision which was originally positive in itsconstruction is now negatively worded and thereforethe injunction granted should be confirmed. Thelearned senior counsel relied upon AIR 1982 SC 1444(Bishwanath Prasad Radhey Shyam Vs. H.M.Industries)which was rendered prior to the amendment todistinguish the above legal position. (e) In the decision reported in 1972 RPC 457 (TheGeneral Tire & Rubber Company Vs. The Firestone Tyreand Rubber Company Ltd and others) on the principle ofcommon General Knowledge, it is held as under:"For construing the patent in suit andagain for reaching a conclusion, if therewas no anticipation, on the issue ofobviousness, it is necessary for us to putourselves into the position of a skilledaddressee at the time the specification waspublished on 20th November, 1950. For it isto a skilled addressee-a skilled manreasonably well versed in the art – that thespecification is deemed to be addressed, andit is by the standards of the common generalknowledge of such a man that one testswhether the invention was obvious or not."(f) In the House of Lords decision reported in1982 RPC 183 (Catnic Components Limited and anotherVs. Hill and Smith Limited) at page 242 it has beenheld as under:"My Lords, a patent specification is aunilateral statement by the patentee, in https://hcservices.ecourts.gov.in/hcservices/ words of his own choosing, addressed tothose likely to have a practical interestin the subject matter of his invention(i.e. "skilled in the art"), by which heinforms them what he claims to be theessential features of the new product orprocess for which the letters patent granthim a monopoly. It is those novel featuresonly that he claims to be essential thatconstitute the so-called "pith and marrow"of the claim. A patent specificationshould be given a purposive constructionrather than a purely literal one derivedfrom applying to it the kind of meticulousverbal analysis in which lawyers are toooften tempted by their training to indulge.The question in each case is: whetherpersons with practical knowledge andexperience of the kind of work in which theinvention was intended to be used, wouldunderstand that strict compliance with aparticular descriptive word or phraseunderstand that strict compliance with aparticular descriptive word or phraseappearing in a claim was intended by thepatentee to be an essential requirement ofthe invention so that any variant wouldfall outside the monopoly claimed, eventhough it could have no material effectupon the way the invention worked."(Underlining is ours)(g) In a Division Bench decision of the DelhiHigh Court reported in AIR 1978 Delhi 1 (Raj PrakashVs. Magnet Ram Choudhary and others) it has been heldas under in paragraph 12 :"12. We have therefore, to read thespecifications and the claims from the specificationsand the claims from the point of view of the personsin the trade manufacturing film strip viewers. It isthe pith and marrow of the invention claimed that hasto be looked into and not get bogged down or involvedin the detailed specifications and claims made by theparties who claim to be patentees or allegedviolators......" (Underlining is ours)again in paragraph 13 it is held that:"13.....It is settled law that the https://hcservices.ecourts.gov.in/hcservices/ title of the specifications of an inventionclaimed does not control the actual claim.A misleading title similarly is of littleconsequence. It is on a proper constructionof the specifications and the claims thatthe true nature of the invention claimed isto be determined and the patent granted hasto be construed......" (Emphasis added)(h) In the decision of the Judicial Committee ofthe Privy Council reported in Vol. XX No.32 RPD 745(Consolidated Car Heating Company Vs. Came) the PrivyCouncil referred to an earlier decision of theChancery Division @ pg. 765 which is to the followingeffect:"In Proctor v. Bennis (L.R. 36 Ch.D.740), Lord Justice Cotton, at page 750,said:- "In my opinion omissions andadditions may be very material inconsidering whether, in fact, the machine ofthe Defendant is an infringement of thecombination which the Plaintiff claims; butif the Defendant really has taken thesubstance and essence of the Plaintiff'scombination, the mere fact that certainparts are omitted or certain parts addedcannot prevent his machine from being aninfringement of the Plaintiff's Patent."(Underlining is ours)thereafter it was ultimately held as under:".....For if the merit consists in theidea or principle which is embodied in it,and not merely in the means by which thatidea or principle is carried into effect, amachine which is based on the same idea orprinciple may still be an infringement,although the detailed means for carrying itinto effect may be somewhat different....."(i) In another Privy council decision reported inAIR 1930 PC 1 (Canadian General Electric Co. Ltd. Vs.Fada Radio Ltd.) the Privy Council extracted the wordsof Lordship Maclean, J., which reads as under:"There must be a substantial exerciseof the inventive power or inventive genius, https://hcservices.ecourts.gov.in/hcservices/ though it may in cases be very slight.Slight alterations or improvements mayproduce important results and may disclosegreat ingenuity. Sometimes it is acombination that is the invention; if theinvention requires independent thought,ingenuity and skill, producing in adistinctive form a more efficient result,converting a comparatively defectiveapparatus into a useful and efficient one,rejecting what is bad and useless in formerattempts and retaining what is useful, anduniting them all into an apparatus which,taken as a whole, is novel, there is subjectmatter. A new combination of well knowndevices, and the application thereof to anew and useful purpose, may requireinvention to produce it and may be goodsubject matter for a patent." (Emphasisadded)(j) In the decision reported AIR 1969 Bombay 255(F.H. & B. Corpn. Vs. Unlchem Laboratories) JusticeVimadalal on the question as to what is an inventionhas held as under in paragraph 16(i):"16(i). An invention consisting of theproduction of new substance from knownmaterials by known methods cannot be held topossess subject-matter merely on the groundthat the substances produced are new, forthe substances produced may serve no usefulpurpose, in which case the inventor willhave contributed nothing to the common stockof useful knowledge (the methods andmaterials employed being already known) orof useful materials (the substances producedbeing ex hypothesis, useless)."(k) In the Division Bench decision of our HighCourt reported in (2000) 3 MLJ 85 (GandhimathiAppliances Limited Vs. L.G.Varadaraju and others) atpage No.93 the Division Bench has stated as under inparagraph 20:"20....Though the grant of a patent byitself does not guarantee it's validity, thefact that a patent has been granted must begiven some weight and significance whileconsidering the question of prima faciecase. The plaintiffs are entitled to place https://hcservices.ecourts.gov.in/hcservices/ reliance on the fact that they have alreadysecured patent. The grant of the patentdoes not on the basis of such grant, makethe patent impregnable. The burden isalways on a plaintiff to establish its caseprima facie before it can claim anyinterlocutory relief. It is always open tothe defendant to question the validity ofpatent. When the defendant is able to pointout some grounds for regarding the patentalready granted, as being prima facieinvalid then at the interlocutory stage,this factor of patent having been granted tothe plaintiff would cease to be ofsignificance while considering the questionof prima facie case. The burden of proof onthe plaintiffs at the interlocutory stage,therefore is not so rigourous, as it wouldotherwise be, if no patent had been grantedin the first place." (Emphasis added)The Division Bench has also held in paragraph 30 asunder:"30. Applying the test set out in thedecisions to which we have referred toearlier, the inevitable conclusion that wereach is that the product patented by theplaintiff, though when dissected and as parttaken separately may now show inventiveness,a combination of the same, and the fact thata new use has been discovered for acombination of known integers, and thefurther fact that inventive steps by way ofingenuity and skill were required to be andhave been displayed in bringing about such acombination and discovering the mode ofapplication of known integers for a product,whose usefulness has been amply demonstratedby the large number of units of wet grinderssold by the plaintiffs since it was first,put on the market in the year 1991,establish that the patent granted in favourof the plaintiffs cannot be regarded primafacie as invalid. The plaintiffs must beheld to have made out a prima facie case forgrant of an injunction....." (l) The learned counsel also relied upon the https://hcservices.ecourts.gov.in/hcservices/ following decisions:(i) AIR 1936 Bombay 99 (Lallubhai Chakubhai Vs.Chimanlal & Co)(ii) Vol. XLIV (5) RPD 105 (Boyee Vs. MorrisMotors Ld.)(iii) 1903 (20) RPC 225(iv) 1995 RPC 585(m) As far as the submission made based on priorart is concerned, the learned senior counsel submittedthat it is not merely similarity but also identityshould be shown and for that purpose placed relianceupon Vol.XXVI IOJ 78 and 1977 FSR 137 (Badische Anilin& Soda Fabrik AG (Distiller's) Application.35. The learned senior counsel by relying upon a report in amagazine viz., 'Techno Treat' contended that a comparative study ofthe Respondent's product with Honda patent, what is disclosed in thesaid magazine can be taken as how the industry has understood theproduct as the report states that the twin plug configuration in theHonda product was in a large bore engine as compared to theRespondent's product in a small bore engine.36. The learned senior counsel by referring to the completespecification filed by the Respondent dated 07.07.2003, submittedthat the patent as claimed by the Respondent related to an inventionto improve the combustion characteristic of an internal combustionengine with improved combustion capacity. By pointing out the same,the learned senior counsel contended that the teaching of thepatent of the Respondent's invention was a combination of twin plugconfiguration in a small bore engine with twin valve facility alongwith other allied provisions in the engine in order to achieveimproved internal combustion.37. The learned senior counsel contended that the Respondentmade a search and brought to the notice of the Patent Controller bypointing out that the Honda twin plug was in a large bore engine andthe Patent Controller was satisfied with the differentiation whilegranting the patent after the submission of the completespecification. The learned senior counsel by referring to Section57 of the Patent Act contended that the Statute provided for makingnecessary amendments to the claim for better understanding of theinvention. By referring to the Honda Patent No.4534322 A1 thelearned senior counsel contended that it related to a large boreengine and 'V' type engine which cannot be construed as a prior art.38. As far as the Honda Patent application 678 of 2001 dated17.07.2001, the learned senior counsel pointed out that theinvention though related to an engine with plurality of ignition https://hcservices.ecourts.gov.in/hcservices/ plugs attached to the same combustion chamber, the same is notcomparable as the said engine was fitted with a water pump andthermostat and also fitted with a radiator for a cooling systeminbuilt in the engine which is not comparable at all to theRespondent's patented product.39. As far as the AVL specification is concerned, the learnedsenior counsel by referring to the report of the AVL engineersthemselves pointed out that the disadvantage of a three valve enginelisted makes a specific reference to the fact that big bore i.e.above 70 mm would only work with twin spark plug.40. As far as the allegation of infringement is concerned,according to the learned senior counsel except the fact that theAppellant product is a three valve in all other respect it matchedwith the Respondent's patented product viz., twin plug, internalcombustion engine with lean burn fuel. The learned senior counseltherefore contended that the third valve which is a variant being acosmetic one and if such a variant is relied upon to escape from theallegation of infringement, it must be shown to be a substitute or adifferent way of doing the same thing. According to the learnedsenior counsel, the variant did not in any way improve the ignitionor the engine function and therefore it has to be construed as acosmetic one as it had nothing to do with the invention of theRespondent.41. The learned senior counsel in his submissions stated thatthe teaching of prior art not being the same, the injunction grantedcannot be found fault with.42. On the balance of convenience, the learned senior counselcontended that the Respondent's product came into the market threeyears prior to the Appellant's product and that it had alreadyachieved commercial success. The learned senior counsel alsocontended that the product was recognised by the entire filed in theautomobile industry and more than 50% of the market is possessed bythe Respondent as compared to the Appellant's product which is yetto be launched as the booking itself was announced on 13.12.2007,while injunction was granted on 19.12.2007 and that when theDivision Bench suspended the injunction on 20.12.2007, there was aspecific condition that the Appellant will not claim equity lateron.43. The learned senior counsel also relied upon the subsequentorder of the Hon'ble Supreme Court dated 18.01.2008, which set asidethe order of the Division Bench and ultimately the Appellant'smotorcycle viz., 'FLAME' was introduced in the market on 10.03.2007with one spark plug alone. https://hcservices.ecourts.gov.in/hcservices/

44. By referring to the above factors, the learned Seniorcounsel contended that the Appellant's business is not in any wayaffected and therefore no irreparable hardship would be caused tothe Appellant by the grant of the injunction. The learned seniorcounsel relied upon 1978 RPC 761 (Corruplast Ltd. Vs. GeorgeHarrison (Agencies) Ltd.) and 1984 FSR 574 (Monsanto Company Vs.Stauffer Chemical Co.) in support of his submissions.45. To meet the arguments of the learned senior counsel for theRespondent that a strong prima facie case should have been made bythe defendant to resist an injunction, Mr.A.L.Somayaji, learnedsenior counsel by relying upon AIR 1980 Delhi 132 (National ResearchDevelopment Corporation of India, New Delhi Vs. The Delhi Cloth andGeneral Mills Co. Ltd. and Ors.) stated that it is on the plaintiffto show strong prima facie case and not on the defendant. Reliancewas also placed upon AIR 1997 Delhi 79 (Franz Xaver Huemer Vs. NewYash Engineers).46. By relying upon 1969 RPC 367 (Rodi & Weinberger Vs. HenryShowell) the learned senior counsel contended that to allegeinfringement all the integers should be shown to be present and thatthe Respondent failed to show that the third valve is a variant andthat the Respondent has also failed to show that in the Honda Patentbore size is more than 70 mm while on the other hand the said patentdid not refer to any bore size and therefore the Appellant's standbased on prior art was well founded.47. Again Mr.P.S.Raman, learned senior counsel also appearingfor the Respondent contended that what AVL teaches is that the thirdvalve aids lean burn, then again there was a good ground made out bythe Appellant for a triable issue and with that consideration, thegrant of injunction was not justified.48. Having heard the learned counsel for the respective partiesand before considering the various submissions, it is worthwhile torefer to some of the relevant provisions of Patents Act 1970 for theproper disposal of these appeals viz.,(i) Sections 2(j), (ja), (l) and (m) talks of invention,inventive step, new invention and patent which reads as under:"Section 2(j) "invention" means a new product orprocess involving an inventive step and capable ofindustrial application;""Section 2(ja) "inventive step" means a featureof an invention that involves technical advance as https://hcservices.ecourts.gov.in/hcservices/ compared to the existing knowledge or having economicsignificance or both and that makes the invention notobvious to a person skilled in the art""Section 2(l) "new invention" means any inventionor technology which has not been anticipated bypublication in any document or used in the country orelsewhere in the world before the date of filing ofpatent application with complete specification, i.e.,the subject matter has not fallen in public domain orthat it does not form part of the state of the art;"Section 2(m) "patent" means a patent for anyinvention granted under this Act;(ii) Section 3 falling under Chapter-II mentions as to what areall not inventions.(iii) Section 9 prescribes as to how and in what manner aprovisional and complete specification can be filed.(iv) Under Section 10(4) it is stipulated that every completespecification should describe fully and particularly the inventionand its operation or use and the method by which it is to beperformed. The sub-clause (a) to (d) of 10(4) reads as under:"Section 10(4) Every complete Specificationshall--(a) fully and particularly describe the inventionand its operation or use and the method by which it isto be performed;(b) disclose the best method of performing theinvention which is known to the applicant and for whichhe is entitled to claim protection; and (c) end with a claim or claims defining the scopeof the invention for which protection is claimed;(d) be accompanied by an abstract to providetechnical information on the invention:"(v) Section 11 talks of priority dates of claims of a completespecification. Sub-clause (7) with its first proviso to Section 11-A is to the following effect;"Section 11-A (7): on and from the date ofpublication of the application for patent and untilthe date of grant of a patent in respect of suchapplication, the applicant shall have the likeprivileges and rights as if a patent for the inventionhad been granted on the date of publication of the https://hcservices.ecourts.gov.in/hcservices/ application;Provided that the applicant shall not be entitledto institute any proceedings for infringement untilthe patent has been granted:"(vi) Examination of an application through an Examiner by theController to call for a report as a result of the investigationmade under Section 13 is provided under Section 12 while the variousaspects to be taken into account while examining the application fora patent referred to under Section 12 to the examiner is specifiedin Section 13.(vii) Section 25 of the Act provides for opposition of thepatent either before or after the grant.(viii) Section 43 falling under Chapter VIII specifies themanner in which the patent is to be granted.(ix) Under Section 45 of the said Chapter, it is specified thatevery patent should be dated as of the date on which the applicationfor patent was filed and the said date should be entered in theregister. Sub-clause (3) to Section 45 specifically states that nosuit or other proceedings shall be commenced or prosecuted inrespect of an infringement committed before the date of publicationof the application.(x) The grant of patent is also subject to certain conditionsas stipulated in Section 47 of the Act. (xi) The rights of the patentees has been stipulated underSection 48, which reads as under:"Section 48. Rights of patentees.-- Subject to theother provisions contained in this Act and theconditions specified in Section 47, a patent grantedunder this Act shall confer upon the patentee---(a) where the subject-matter of the patent is aproduct, the exclusive right to prevent third parties,who do not have his consent, from the act of making,using, offering for sale, selling or importing forthose purposes that product in India;(b) where the subject-matter of the patent is aprocess, the exclusive right to prevent third parties,who do not have his consent, from the act of using thatprocess, and from the act of using, offering for sale,selling or importing for those purposes the product https://hcservices.ecourts.gov.in/hcservices/ obtained directly by that process in India:"(xii) Section 57 falling under Chapter-X provides for amendmentof application and specification or any document relating theretobefore the Controller.(xiii) Section 64 falling under Chapter-XII provides forrevocation of patents granted either before or after thecommencement of the Act. The relevant part of the said Sectionfalling under sub-section (1)(e),(f),(j) and (m) reads as under:"Section 64(1)(e): that the invention so far asclaimed in any claim of the complete specification isnot new, having regard to what was publicly known orpublicly used in India before the priority date of theclaim or to what was published in India or elsewhere inany of the documents referred to in Section 13;Section 64(1)(f): that the invention so far asclaimed in any claim of the complete specification isobvious or does not involve any inventive step, havingregard to what was publicly known or publicly used inIndia or what was published in India or elsewherebefore the priority date of the claim;Section 64(1)(j): that the patent was obtained ona false suggestion or representation;Section 64(1)(m): that the applicant for thepatent has failed to disclose to the Controller theinformation required by section 8 or has furnishedinformation which in any material particular was falseto his knowledge;"(xiv) Section 104-A(1) specifies about the burden of proof incase of suits concerning infringement which reads as under:"Section 104-A(1): In any suit for infringementof a patent, where the subject-matter of patent is aprocess for obtaining a product, the Court may directthe defendant to prove that the process used by him toobtain the product, identical to the product of thepatented process, is different from the patentedprocess if,--(a) the subject-matter of the patent is a processfor obtaining a new product; or(b) there is a substantial likelihood that theidentical product is made by the process, and thepatentee or a person deriving title or interest in thepatent from him, has been unable through reasonable https://hcservices.ecourts.gov.in/hcservices/ efforts to determine the process actually used;Provided that the patentee or a person derivingtitle or interest in the patent from him, first provesthat the product is identical to the product directlyobtained by the patented process."(xv) Section 107 specifies the defence available in a suit forinfringement which reads as under:"Section 107: Defence, etc., in suits forinfringement.-- (1) In any suit for infringement of apatent, every ground on which it may be revoked undersection 64 shall be available as a ground for defence.(2) In any suit for infringement of a patent by themaking, using or importation of any machine, apparatusor other article or by the using of any process or bythe importation, use or distribution of any medicine ordrug, it shall be a ground for defence that suchmaking, using, importation or distribution is inaccordance with any one or more of the conditionsspecified in section 47."49. Keeping the above provisions of the Patents Act in mindwhen we consider the rival submissions of the parties, we are ableto discern the following uncontraverted facts viz.,(a) The Respondent's patent application alongwith the specifications was filed on 16.07.2002. Inthe said application, the invention claim related toimprovement in the combustion characteristic of asingle cylinder internal combustion engine working onfour stroke principle with two valves and with twospark plugs.(b) On 07.07.2003, the Respondent filed itsamended complete specification, wherein, it wasclaimed that the provision of pair of spark plugs wasan improvement of the prior art with one spark plugand that the provision of two spark plugs improvedcombustion of lean mixture of fuel without affectingthe performance.(c) On 13.08.2004, the International SearchReport came to be made which stated that the claimedinvention cannot be considered novel or cannot beconsidered of involving inventive step when thedocument is taken alone in the light of the US HondaPatent No.4534322 A1 (MATSUDA) dated 13.08.1985.Subsequently, the Respondent filed the provisional /complete specification on 08.11.2004 titling the same https://hcservices.ecourts.gov.in/hcservices/ as an improved internal combustion engine working onfour stroke principle.(d) Honda Patent No.4534322 is known as US PatentMATSUDA dated 13.08.1985, the engine of whichcontained two spark plugs with two valves. Thedetails of the said patent as placed before the Courtdid not specify the bore dia, but it was a 'V' typeengine.(e) The Respondent's patent No. 195904 of16.07.2002, came to be issued with a date of sealingof 07.07.2005, declaring the invention as an ImprovedInternal Combustion Engine working on four strokeprinciple and was published in Issue No.28/2005 dated29.07.2005.(f) The Appellant entered into a TechnicalAssistance Agreement dated 13.11.2000, with M/s. AVL,Austria for designing a new three valve cylinder headwith lean burn combustion system with a provision fortwin plugs. The consideration as stipulated in theagreement payable by the Appellant was fixed at a sumof EURO 349.522. The agreed bore dia in the saidagreement was 44 mm and upwards with cylinder volumecapacity of 75 cc and upwards with three valvesprovision.(g) The Appellant entered into a TechnicalCollaboration Agreement with M/s. AVL, Austria on10.06.2005.(h) The Appellant has filed his application forrevocation of Respondent's patent No.195904 before theIntellectual Property Appellate Tribunal, Chennai on24.08.2007. In the grounds of revocation, theAppellant contended that the subject matter of thepatent specification stands anticipated, it isobvious, it is not patentable and that the patentspecification is not clear. In support of its standthat the Respondent's patent stands anticipated, theAppellant relied upon the Japan publication No.59-060056 published on 05.04.1984. For the ground thatthe Respondent's patent was not new, the Appellantrelied upon US Patent No.4534322 of MATSUDA. For thecontention that the Respondent's invention claim wasobvious and that internal combustion engine with twospark plugs was already known, the Appellant reliedupon various other existing patents. https://hcservices.ecourts.gov.in/hcservices/ (i) The invention as claimed by the Respondent inthe application filed in support of the injunctionapplication is usage of two spark plugs for efficientburning of lean air fuel mixture in a small boreengine (bore size between 45 mm and 70 mm) in order toprovide improved combustion characteristic of lean airfuel mixture burning as stated in paragraphs 11 and 14of the affidavit filed in support of the injunctionapplication with specific averment in paragraph 34(i)to the effect that its invention is spark plug centricand not valve centric.(j) There was a complete specification bearingNo.678-2001, dated 17.07.2001 of Honda Giken KogyoKavushiki Kaisha a Corporation of Japan claiminginvention of four stroke engine with plurality ofignition plugs exposed to the same combustion chamberstating that it can be applied widely to any enginei.e. without any restriction to the size of the bore.50. The sum and substance of the invention as claimed by theRespondent is a small bore four stroke engine having twin sparkplugs with two valves to achieve efficient combustion on lean airfuel mixture.51. The teachings of the patent according to the Respondent isan improvement in the combustion (combustion is the process ofburning) of lean air mixture in the small bore engine for improvedfuel efficiency and emission characteristics . According to theRespondent the arrangement of twin spark plugs in a small boreengine is positioned in such a manner that efficient burning oflean air mixture takes place to provide improved combustion andthereby there would be high saving of fuel while at the same timewithout compromising on the performance of the engine. It isfurther contended on behalf of the Respondent that if the saidteaching of the Respondent's patent is not in controversy, theRespondent is entitled for the injunction as against theinfringement of the said patent.52. The infringement complained of is that the Appellant's 125cc motorcycle called "FLAME" contains a four stoke internalcombustion engine in a small bore lean air burn engine of size 54.5mm to 53.5 mm possessing combustion of lean air fuel mixture withtwo spark plugs located diametrically opposite. The Respondentwould therefore contend that the characteristics of the product ofthe Appellant in its 125 cc motor cycle called "FLAME" havingeverything similar and identical to that of the patented product ofthe Respondent except the three valve arrangement and the third https://hcservices.ecourts.gov.in/hcservices/ valve being a cosmetic one, the allegation of infringement is fullyestablished and consequently the injunction applied for and grantedby the learned Judge is justified.53. As against the above case pleaded by the Respondent,according to the Appellant the first and foremost allegation ofinfringement as against the Appellant cannot be accepted since theproduct of the Appellant is covered by the concept of prior art, inso far as, it relates to twin spark plug arrangement in an internalcombustion engine and apart from the fact that the provision ofthree valves in its internal combustion engine is by way of anarrangement with M/s AVL, Austria makes all the difference in theworking of the engine. 54. On behalf of the Appellant, it is strenuously contendedthat the three valves arrangement in its internal combustion engineis not a cosmetic one nor a variant. It is claimed that the USHonda Patent bearing No.4534322, no where stipulates the bore sizewhile on the other hand a reading of the said patent discloses thatin order to over come the disadvantage of effective combustionprocess in a large bore, the invention of introduction of twin plugcame to be made for effective combustion process in an internalcombustion engine, that therefore the Respondent's claim of newinvention while securing the Patent No.195904 itself will not standand consequently it would necessarily result in the revocation ofit, in its application filed before the Tribunal.55. As far as the stand of the Respondent that its patentedproduct is plug centric and not valve centric, the Appellant placedreliance upon the amended complete specification dated 08.11.2004,wherein, after describing the nature of its product and after makingreference to the International Search Report which pointed out thatin the light of the US Patent No.4534322 A1, the invention claimedby the Respondent cannot be considered novel or possess anyinventive step, the Respondent attempted to highlight the working ofthe product by concentrating on the provision of two valve asagainst three valves pointed out in the US patent and ultimatelywhile summarising its invention in the form of a claim gave thrustto the two valve arrangement for efficient burning of lean air fuelmixture in a small bore engine which display the Respondent realclaim based on valve centric and not plug centric. 56. According to the Appellant when the ultimate patent came tobe granted/sealed on 07.07.2005, after the amended final completespecification dated 08.11.2004, it is no longer open to theRespondent to still contend that efficient internal combustion ofthe lean air fuel mixture was due to twin plug arrangement was amisnomer and therefore the patent granted itself cannot be held tobe valid as there is every likelihood of the said patent being https://hcservices.ecourts.gov.in/hcservices/ revoked in the Appellant's application for revocation before theAppellate Tribunal.57. One other factor referred to by the Appellant is thespecific reference made by the Respondent in its amended completespecification where while referring to the US Patent No.4534322 A1,the Respondent while admitting the use of two spark plugs in anengine with three valves made a statement that such a provision wasin a large bore engine with diameter of more than 70 mm as a knownprior art. According to the Appellant, such a statement containedin the amended complete specification of 2004 was contrary to thespecification contained in the US patent and came to be made by theRespondent distortedly with a view to overcome the hurdle pointedout in the International Search Report dated 13.08.2004 andconsequently, the Respondent cannot be permitted to rely on thepatent and the alleged infringement by the Appellant for the grantof injunction.58. When we analysis the above stand of the respective parties,we find in the description of the US Patent No.4534322, inparticular in the background of the invention and the object of theinvention a specific statement as found which is to the followingeffect viz.,"....This in turn requires larger cylinderheads 106 and 108, precluding the possibility ofmaking the engine more compact."Thereafter, while considering the object of the invention, it isstated that "The present invention is intended toovercome these disadvantages, by means of a pairof cylinder heads, in a V type horizontalopposition engine, which have spark plugsinstalled from the cam chain chamber side,bringing about compactness as well as theability to use the two heads together."A reading together of the last part of the "background of theinvention" and the first part of the "object of the invention" asextracted above, it is quite clear that the patented US inventioncontained several improvements including the disadvantage of largercylinder heads which was overcome by the patented product and thesame obviously means the provision of twin spark plugs with threevalve fitted in a small bore engine for efficient internalcombustion process.59. If such a reading of the US patent can be prima facie https://hcservices.ecourts.gov.in/hcservices/ inferred, by a reading of the said US patent No.4534322, we findforce in the submission of the Appellant that there is a groundavailable for the Appellant to be considered in its application forrevocation pending before the Appellate Tribunal. Besides, theabove position in regard to the Respondent's patent vis-a-vis USPatent No. 4534322, the contention of the Respondent that effectivecombustion process in a lean burn air mixture was due to twin plugarrangement as highlighted in its pleading requires to be examinedwith little more circumspection, in as much as, a close reading ofthe amended final complete specification of the Respondent dated08.11.2004, discloses that the Respondent wanted to highlight moreon the twin valve provision rather than twin plug arrangement. Itwould be worthwhile to extract some of the statements contained inthe said amended complete specification of the Respondent dated08.11.2004 viz.,"This invention relates to improvement inthe combustion characteristics of a two valveper cylinder internal combustion engine workingon four stroke principle.....""These engines are provided with two valvesnamely inlet valve and exhaust valve. Thesevalves open in a cavity in the cylinder headconventionally known as combustion chamber. Thevalves are actuated by rocker arms....."".....There are various methods known toimprove the engine performance by optimizing thecombustion characteristics. Some of these areimproved ignition timing, improved combustionchamber design, improved valve timing and valveangles etc.""The invented two valve per cylinder enginewith improved combustion characteristics forefficient air fuel mixture burning, essentiallycomprises of a pair of spark plugs (21 & 22),sleeve (23), O rings (24 and 24a), cylinder head(25), circlip (26) and sleeve cap (27).""With reference to figure 2, the two valveper cylinder engine with improved combustioncharacterises for lean air fuel mixture burninghas two spark plugs are located in the cylinderhead 25 diametrically opposite to eachother.....""The applicants have developed a two valve,per cylinder 150 cc capacity with invented https://hcservices.ecourts.gov.in/hcservices/ features of this application and the same hasbeen evaluated....." "WE CLAIM: (1) An improved Internal Combustion Engineworking on four stroke principle, having twovalves per cylinder, for efficient burning oflean air fuel mixture used in engines whereinthe diameter of cylinder bore ranges between 45mm and 70 mm, characterized in that saidInternal Combustion Engine comprises a pair ofspark plugs....."(6) An improved Internal Combustion Engineworking on four stroke principle, having twovalves per cylinder, for efficient burning oflean air fuel mixture used in engines whereinthe diameter of cylinder bore ranges between 45mm and 70 mm.....(7) An improved single cylinder InternalCombustion Engine working on four strokeprinciple having two valves for efficientburning of lean air fuel mixture used in engineswherein the diameter of said cylinder boreranges between 45 mm and 75 mm substantially asherein described and as illustrated in thedrawings accompanying the specification."(Emphasis added)60. Therefore in the original specification filed on16.07.2002, the provision of twin spark plugs as against the priorart engine with one spark plug was the centric of the claim. 61. In the amended complete specification dated 07.07.2003also, the centric point was the provision of two spark plugs forgenerating spark at two predetermined location at the same time toenable the engine to run efficiently resulting in decreasedemission, decreased fuel consumption and good drivability. 62. It is relevant to note that after the filing of initialspecification dated 16.07.2002, as well as the amended completespecification on 07.07.2003, the International Search Report dated13.08.2004, came to be issued pointing out that the claimedinvention cannot be considered novel or involving inventive step inthe light of the US Patent No.4534322 A1 and that thereafter makinga specific reference to the said US patent, the Respondent cameforward with its amended final complete specification dated08.11.2004, giving more thrust to the provision of two valves even https://hcservices.ecourts.gov.in/hcservices/ while referring to the twin plugs configuration which apparentlyappeared to have persuaded the Controller to grant the patent andsealing on 07.07.2005. 63. If such a prima facie conclusion is inevitable, we areconstrained to state that there is considerable force in the claimof the Appellant in contending that the patent of the Respondentsuffers from the vice of prior art and obviousness.64. At the risk of repetition, it will have to be stated thatthe US Honda Patent having twin plugs configuration, withoutspecific reference to the bore size with three valve provisiongranted on 13.08.1985, would certainly militate against the claim ofthe Respondent based on its patent dated 16.07.2002, sealed on07.07.2005 in Patent No.195904. In all fairness, it would beappropriate for the parties to workout their remedies in theapplication for revocation pending before the Appellate Tribunalfiled at the instance of the Appellant in order to ascertain whetheror not the grounds raised in the said application would render thealready granted patent in favour of the Respondent invalid. In asmuch as Section 107 of the Patents Act enable the Appellant in asuit for infringement of a patent to rely upon every ground on whichit may be revoked under Section 64 as a ground of defence for thedefendant, the parties can work out their remedy in the suit aswell.65. We are of the considered opinion that such grounds raisedby the Appellant in its application for revocation included thegrounds viz., anticipated patent, obviousness in the patent and theinvention in the patent is not patentable. In support of the groundthat the patent stands anticipated, the Appellant relied upon JapanPatent No.59-060056 dated 05.04.1984 and the characteristic contentsin the said publication to show that the Respondent patent containsthe very same characteristics. As far as the ground that the patentis not new, the Appellant relied upon US Patent No.4534322 publishedon 13.08.1985, which again was a specific ground raised in thepresent suit as well as in the application for injunction. For thecontention that the invention is obvious, the Appellant relied uponseveral patents granted in 1938, 1989 and certain other publicationsreferred in detail in the application for revocation.66. Apart from the above analysis, when we consider the claimof valid patent by the Respondent and the alleged infringement bythe Appellant it will be worthwhile to understand the teachings ofthe already patented product of the Respondent and the claim of theAppellant in respect of the alleged infringed product viz., 125 cc'FLAME', we had an opportunity of making a reference to an articlewritten by a student of Rajiv Gandhi School of Intellectual Property https://hcservices.ecourts.gov.in/hcservices/ Law, IIT Kharagpur, Mr.J.Sai Deepak titled "SPARKS FLY AS TITANSCROSS PLUGS". The said article throws much light on the working ofthe product of the patentee viz., the Respondent and that of theAppellant. We deem it appropriate to extract a few points expressedin the said article which reads as under:".....Through its written description, Bajaj hasexplained in sufficient detail the disadvantage ofusing a single spark plug, as opposed to using twinspark plugs located preferably diametrically to eachother (US patent 4177783 too contains a similararrangement). This is because of better-controlledignition timing in the latter and lesser time takenfor the flame to travel during combustion. It hasspecifically listed the merits of use of twin sparkplugs in a lean mixture (a mixture where theproportion of fuel in air is lesser when compared torich mixture).The novelty according to Bajaj, also lies in theuse of a sleeve to protect the spark plug which issusceptible to exposure to lubricating oil. Such beingthe case, the emphasis and the scope of protectionwould be limited to use of twin spark plugs in asingle cylinder with two valves, one plug protected bya sleeve. It is interesting to note that of the fourpatents cited in the International Search Report inthe PCT application, 3 relate to inventions only onsleeve, and only one speaks of use of twin sparkplugs.CC-VTi, on the other hand, predominantly is abouteven combustion of fuel by altering the air-fuelmixture received by the 2 intake ports or valves.Usually, a cylinder has one intake and one exhaustvalve. Earlier, the charge (air-fuel mixture) waseither subjected to swirl or a tumble depending on theload conditions and speed. The stirred orcircumferential motion of charge in the cylinder iscalled swirl, whereas a motion directed towards theaxis of the cylinder is called tumble.The former is used for a lean mixture and thelatter is used for richer mixtures at high speeds.Several patents on the use of these phenomena exist.TVS’s technology combines both these phenomena with 2intake ports, providing swirl and tumblesimultaneously, making the design compatible for bothlean and rich mixtures. The degree of swirl would begreater for a lean mixture and the degree of tumble https://hcservices.ecourts.gov.in/hcservices/ for rich mixture. This design ensures even combustionof fuel in all corners of the cylinder and is furthermarked by the use of twin spark plugs, which asexplained earlier, provides fuller combustion.This shows that the points of emphases in thedesigns of both these technologies differconsiderably, notwithstanding the use of twin sparkplugs in both instances....." (Emphasis added)67. The distinction made out by the Author of the said articleis quite appealing and does not conflict with the facts pleaded bythe parties before us. By taking a clue from the said article, whenthe patented product of the Respondent is considered, the grantedpatent is an improved internal combustion engine working on fourstroke principle. Accepting the stand of the Respondent that withthe placement of the twin spark plugs in the cylinder head ondiametrically opposite sides and the ignition points set in such amanner resulting in improved internal combustion in a lean burnmixture, the claim of the Appellant's in relation to its productviz., 125 cc 'FLAME' talks of even combustion of fuel by alteringthe air fuel mixture received by the two intake valves with thecombination of swirl as well as tumble operated air fuel mixture.In other words, while the Respondent's patented product of animproved internal combustion engine is by virtue of the functioningof two spark plugs due to its ideal location and the point ofignition in a lean burn operation, the product of the Appellantthough also with the provision of twin spark plugs, the internalcombustion was due to the receipt of air fuel mixture by the twointake valves (one providing swirl action and another tumble action)with the third valve being exhaust valve also providing effectiveinternal combustion with the combination of lean burn and rich burnmixture.68. Having regard to the nature of operation of the engine ofthe patentee viz., the Respondent as well as the Appellant in such adescriptive manner viz., one by virtue of twin spark plugs and theother by virtue of receipt of air fuel mixture through two differentintake valves both by swirl and tumble operations, as rightlyobserved by the author of the said article, the point of emphasis inthe description of the product of the Appellant as well as theRespondent differ considerably notwithstanding the use of twin sparkplug in both the technologies. Viewed in that respect also we areconvinced that the alleged infringement of the Respondent's patentcannot be prima facie accepted.69. When we refer to the various decisions relied upon by thelearned senior counsel for the respective parties the followingprinciples emerge viz., https://hcservices.ecourts.gov.in/hcservices/ (i) The validity of a patent can be challenged ina suit on various grounds of revocation as set outunder Sections 64 and 107 of the Patents Act.(ii) For the grant of interim injunction in apatent matter, the prima facie validity of the patentshould be shown and also the prima facie infringementshould be proved apart from the availability ofbalance of convenience and irreparable loss.(iii) If the patent is a new one, mere challengeat the Bar would be quite sufficient for the refusalof an interim injunction as compared to a fairly oldpatent.(iv) Even in IPR cases, apart from prima faciecase, balance of connivence and irreparable injury,the mere registration of the patent alone would not besufficient and the Court must look at the whole casei.e. the strength of the case of the plaintiff and thestrength of the defendant.(v) Irrespective of the examination andinvestigation made under Sections 12 and 13 of thePatents Act, no presumption can be drawn as to thevalidity of the patent and whether the application forrevocation of patent is pending and when seriouscontroversy exist as regards the existence of aninvention based on prior art, the Court should be slowin granting the injunction.(vi) There can be no infringement if the opponenthas proved the same result by a different combinationof different elements.(vii) The general rule in regard to theconstruction of the validity of a patent is, thatconstruction which makes it valid should be preferredrather than the construction which rendered itinvalid.(viii) Patent specification should intend to beread by a person skilled in the relevant art but theirconstruction is for the Court and to do so it isnecessary for the Court to be informed as to themeaning of the technical words and phrases and whatwas the common general knowledge i.e., the knowledgethat the notional skilled man would have.(ix) In construing an allegation of infringement, https://hcservices.ecourts.gov.in/hcservices/ what is to be seen is whether the alleged infringementhas taken the substance of the invention ignoring thefact as to omission of certain parts or addition ofcertain parts.(x) While analysing a claimed invention, it isrelevant to examine as to whether the inventionrequires independent thought, ingenuity and skill,producing in a distinctive form a more efficientresult and there by converting a comparativelydefective apparatus into a efficient and useful onewhich, taken as a whole, is novel.(xi) Though the grant of patent by itself doesnot guarantee its validity, it should be given someweight and significance while considering the questionof prima facie case and it is always open to thedefendant to question the validity of the patent.(xii) Though the claimed invention may consist ofknown factors, known integers i.e. if by combinationof such known integers if a new use has beendiscovered that should be construed to have displayedinventive steps by way of ingenuity and skill.70. By applying the above settled principles deduced from thedecisions of both English as well as Indian cases, we find that theAppellant's contention as regards the validity of the patent is amatter for detailed investigation in the main suit as well as in theapplication for revocation pending before the Appellate Tribunal. 71. Prima facie when we examine, as rightly set out in thearticle of Mr.J.Sai Deepak, student of I.I.T. Kharagpur, theRespondent's patented product de hors the fact that it has thealready existing concept of twin plug operation in an internalcombustion engine, at the threshold we are not inclined even primafacie to state that the validity of the patent is doubtful. Theoperation of the invention as claimed by the Respondent appears tobe plug centric one in as much as having regard to the descriptivestatement in the final complete specification it will have to beheld that the claim as set out therein if accepted would spark theignition with twin plugs in a four stroke engine of a singlecylinder with two valves specification produce improved internalcombustion in a lean burn mixture and the Respondent may well bejustified in its attempt to enforce its rights based on the saidpatent. Nevertheless, on that score alone, we find it difficult tocountenance the claim of the Respondent that the Appellant's productspecification have infringed its patented right. Here again, wefind considerable knowledgeable expression made by the author of the https://hcservices.ecourts.gov.in/hcservices/ article Mr.J.Sai Deepak, wherein, he has differentiated the productof the Appellant as valve centric one in as much as the two intakevalves as claimed by the Appellant provides for combined air fuelmixture of swirl and tumble action, with a separate exhaust valve inan internal combustion engine of single cylinder with four strokewith the aid of twin plug provision. The descriptive note of theauthor in stating that the Appellant's product is predominantly ofeven combustion of fuel by altering the air fuel mixture received bytwo intake ports or valves and that therefore the said technologydiffers considerably with that of the Respondent is quiteconvincing. 72. In this context, it will be worthwhile to refer to the AVLpatent No.196636, dated 25.05.2000 granted/sealed on 08.11.2006,which has been adopted by the Appellant based on the TechnicalAssistance Agreement dated 13.11.2000, Technical CollaborationAgreement dated 25.06.2004 and another Technical CollaborationAgreement dated 10.06.2005 with AVL Austria. In fact, the PatentOffice of Government of India, Ministry of Commerce and Industry,registered the name of the Appellant as a Licensee based on itsagreement dated 09.10.2007, with AVL LIST GMBH in respect of PatentNo.196636 dated 25.05.2000, granted to AVL LIST GMBH. In theprovisional and complete specifications of AVL, the operation ofthree valve system in a four stroke internal combustion engine hasbeen set out as under:"This is achieved in accordance with theinvention in that the fuel supply device is formed bya joint carburettor for both inlet ports, withpreferably the carburettor being arranged in the zoneof the branching of the inlet ports from the inletpipe. As a result of the combination between loadcharging port, volumetric port and a fuel supplydevice arranged as a conventional carburettor, it ispossible in a very simple manner to achieve acontrolled combustion in the combustion chamber withvery low emission values and very favourable fuelconsumption. By using a conventional carburettor witha double inlet port configuration with a volumetricport and a charge loading port it is possible to makedo without any complex electric and electronicdevices. Thus one can omit complex control andregulation apparatuses for injecting the fuel,including the higher provision of energy. Carburettortechnology moreover offers the highest possiblereliability and the additional advantage that thedimensional volume, weight and costs of the internalcombustion engine can be kept very low. https://hcservices.ecourts.gov.in/hcservices/ In order enable the optional performance of astratification in the combustion chamber, it isprovided for a further embodiment of the inventionthat during the opening of the throttle device thecharge loading port can be opened at first and thevolumetric port thereafter.The charge loading port has the task of providingthe charge in the combustion chamber with a momentumabout the cylinder axis. It can be arranged as atangential or spiral port.It can be provided for on the basis of theconcept that the charge loading port which is arrangedas a tangential or swirl port is provided with alarger length then the volumetric port. If the chargeloading port is arranged as a tangential port, it isprovided with only a low curvature and is stronglyinclined towards the valve axis and produces a flowwhich hits the cylinder wall tangentially and leads tothe formation of a strong swirling movement in thecylinder. The volumetric or natural port is providedwith a stronger curvature as compared with thetangential port, but shows a lower inclination towardsthe valve axis. It produces a stream directedapproximately against the centre of the cylinder whichneither produces a marked swirling movement, nor atumble movement.The throttling of the volumetric port ensuresthat the admission of the charge from this port occurswith a lower impulse into the cylinder chamber thanthe air supplied by the tangential port. The overallflow field in the cylinder chamber is thus dominatedby the unthrottled tangential port. The chargeloading thus produces a rapid, stable and evencombustion. This leads to a lower susceptibility toengine knock despite higher compression. This createsthe prerequisites for achieving high thinnability inorder to achieve lower fuel consumption. At the sametime, compatibility for higher exhaust gas returnrates is increased, thus enabling a considerabledecrease in Nox emissions."In the pleadings viz., the counter affidavit of the Appellant filedin O.A.No.1357 of 2007 in C.S.No.1111 of 2007 in paragraph 30, theAppellant has specifically averred that its arrangement with AVL,Austria, the Appellant is as a Licensee of Indian Patent No.196636,dated 25.05.2000. In the same counter affidavit in para 39, the https://hcservices.ecourts.gov.in/hcservices/ Appellant has explained about the operation of three valveconfiguration in the internal combustion engine, the operation ofwhich has been patented in patent No.196636 dated 25.05.2000.73. Besides the above, the set of photographs filed by theAppellant in Volume VIII of the typed set of papers which have beenmarked as Figures I to XIX also discloses the marked difference asbetween the three valve configuration of the Appellant and two valveconfiguration of the Respondent vis-a-vis the positioning of thetwin plugs in the respective engines which are quite visible. Thephotographs are annexed as Figures I to XIX to this Judgment forready reference. The above referred to statements contained in theIndian Patent No.196636, the terms of the agreement and therecognition of the Appellant as a Licensee by the patent office readalong with the stand of the Appellant in its counter affidavitsufficiently demonstrate that the internal combustion process in theAppellant product was not exclusively dependent on the twin plugoperation but was based on the three valve configuration in PatentNo.196636 dated 25.05.2000. If such a conclusion can be arrived ateven prima facie, we are convinced that the stand of the Appellantis well justified. We therefore approve the stand of the Appellantthat the third valve is not merely a cosmetic one.74. Our conclusion is also fortified by the statutoryprovision of the Patents Act. A reading of the definition'invention', 'inventive step' and 'new invention' as defined underSection 2 (j), (ja) and (l) respectively, makes it clear that thetechnical advance which had not so far fallen in public domain in anindustrial application and which was not obvious before itspronouncement, such technical advance though may be miniscule innature could still be recognised as an invention and once it getsthe seal of approval of the Patent Authority by way of grant ofpatent, the same will have to be given its due recognition. In thecase on hand, the claimed invention of the Respondent in respect ofits patent No.195904 viz., improved internal combustion working onfour stroke principle with twin plug and two valves configurationmerits its own recognition by virtue of the patent dated 16.07.2002,with date of sealing on 07.07.2005 and is protected by the provisionof the Patents Act in particular Section 48. In the same manner,the Appellant as a Licensee of Patent No.196636 dated 25.05.2000,with date of sealing on 08.11.2006, in respect of its invention offour stroke internal combustion engine with at least two inlet valveand one exhaust valve also with twin plug configuration is entitledto be recognised on its own merits with equal protection of thePatents Act in particular Section 48.75. Our conclusion being prima facie for the purpose of dealingwith an Interlocutory Application of the Appellant as well as theRespondent, the parties will have to workout their remedies in the https://hcservices.ecourts.gov.in/hcservices/ revocation application of the Appellant before the AppellateTribunal and also while contesting the main suit on merits at thetime of its final hearing independent of whatever stated in thisJudgment. Operation of Sections 64, 104-A and 107 of the PatentsAct will have to be independently applied at the appropriate stageof the respective proceedings.76. When we apply the law laid down in the various decisionscited 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 alwaysbe challenged in the High Court on various grounds for revocation asprovided under Section 64 or the ground on which the allegation ofinfringement is to be established as provided under Section 104 andor could be defended under Section 107 of the Patents Act.77. In as much as we have held that the patent of theRespondent viz., patent No.195904, dated 16.07.2002 and the claim ofthe Appellant as a Licensee of patent No.196636 dated 25.05.2000 areprima facie valid in their respective spears of invention, evenapplying the ratios laid down in the decisions referred to in ourJudgment, the parties are relegated to workout their remedies atthe appropriate stage in an appropriate manner while contesting therevocation application before the Appellate Tribunal or at the timeof the final hearing of the main suit.78. As far as the ratio laid down to the effect that if apatent is a new one, the Court are to be slow in granting interiminjunction, we find that in the case on hand, the Respondent'spatent No.195904 came to be granted/sealed on 07.07.2005 and thelaunching of the Appellant's vehicle 125 cc 'FLAME' was scheduled inthe month of December, 2007. Moreover, as discussed in detail inthe earlier paragraphs, even the Appellant's vehicle contains fourstroke internal combustion engine with three valve configuration byvirtue of the licence it holds in respect of Indian PatentNo.196636, dated 25.05.2000, granted/sealed on 08.11.2006. In suchcircumstances, while it cannot be held that the Respondent's patentNo.195904 was too old, while at the same time the fact that theAppellant was also supported with a valid patent as a licencee, thegrant of injunction does not call for in the facts and circumstancesof this case.79. Further applying the well laid down principle that whenapplication for revocation of a patent of the Respondent is pendingbefore the Appellate Tribunal and when such an application has beenpreferred on the ground of existence of a prior art, obviousness andother formidable grounds as provided under Section 64 of thePatent'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. According to the https://hcservices.ecourts.gov.in/hcservices/ Appellant the failure of the Respondent in its initial specificationdated 16.07.2002 and the amended specification of the year 2003, innot specifically referring to the Honda Patent No.4534322 dated13.08.1985, and making a reference to the said patent after theInternational Search Report dated 13.08.2004 and that too by makinga statement that the said existing Honda Patent related to largebore size and not with reference to a small bore are all groundswhich require detailed consideration on merits. The allegation ofthe Appellant that the Respondent secured the patent by making adeceptive statement about the bore size of the Honda Patent,requires a detailed investigation. Further it will have to bestated that such an allegation of the Appellant cannot be rejectedas baseless or made without any substance. In such circumstances asheld in various decisions referred to above, the grant of interiminjunction would be wholly not justified.80. In the case on hand, the alleged infringement is in respectof the improved internal combustion achieved by the Respondent in afour stroke engine of small bore with twin plugs operations of leanburn fuel. In the decision relied upon by the learned seniorcounsel for the Respondent reported in 1884 (6) RPC 49 (WilliamNeedham and James Kite Vs. Johnson and Co.) it has been held thatthere can be no infringement if one has produced the same results bya different combination of different elements, that is another and adifferent combination, and is not either an improvement or anythingelse of the other and that it should be wholly different. Applyingthe said principle as we have noted that the Appellant's product isa four stroke internal combustion engine with two inlet valves andone exhaust valve which application had its own special effects inthe operation of the internal combustion of the engine or in itsimprovement, such an operation when supported by another validIndian Patent No.196636 dated 25.05.2000, it will have to benecessarily held that the allegation of infringement based on theRespondent's patent No.195904 dated 16.07.2002 by itself cannot formthe basis for the alleged infringement. In other words, we areconvinced with the teachings of the Respondent's invention of itsPatent No.195904 dated 16.07.2002 has been distinctivelydistinguished by the teaching of the patent No.196636 dated25.05.2000, which supports the alleged infringed product of theAppellant and therefore the grant of injunction by the learnedSingle Judge cannot be sustained.81. As far as the preposition that the patent specificationsare intended to be read by persons skilled in the relevant art, wehave found that there is at least one article by an enlightenedstudent of Intellectual Property Law of I.I.T. Kharagpur, which wehave referred in detail in the earlier paragraphs, where the Authorwas able to demarcate the distinctive features of the patentedproduct of the Respondent as well as that of the Appellant and by https://hcservices.ecourts.gov.in/hcservices/ making a reference to the descriptive distinction in the respectivespecifications of the Appellant as well as the Respondent, we arequite convinced that even going by the independent opinion of aperson in the concerned field of art there is no scope to restrainthe Appellant by way of grant of interim injunction. In the variousother materials relied upon, we do not find a comparative analysismade with particular reference to the respective patents of theparties.82. As far as the application of the concept of pith and marrowof the claim, what is stated is that novel feature which is claimedto be essential would constitute the pith and marrow. The novelfeature in the invention of the Respondent based on patent No.195904dated 16.07.2002, varies in very many respects in the novel featureof the Appellant's product based on patent No.196636 dated25.05.2000. While the acclaimed novel feature of the Respondent'sproduct is twin plug operation resulting in improved internalcombustion, the acclaimed novel feature in the Appellant's productis in the operation of two intake valves with one exhaust valveproviding a combination of swirl and tumble operation of lean andrich air fuel mixture in its internal combustion process of coursewith the aid of twin plugs. If the pith and marrow of theRespondent and the Appellant are distinctively identifiable there isabsolutely no scope for grant of injunction as has been done by thelearned Single Judge.83. In fact in the decision reported in AIR 1930 PC 1 (CanadianGeneral Electric Co. Ltd. Vs. Fada Radio Ltd.) the Privy Council hasheld that slight alterations or improvements may produce importantresults and may disclose great ingenuity. When we apply the saidlaw laid down in sustaining an invention, we are convinced that the"invention" consisting of an "inventive step" at the hands of theAppellant and the Respondent operate independently though in respectof four stroke internal combustion engine with twin plug operationof lean burn mixture. 84. Therefore, while on the one hand the Respondent's patenthaving been granted is to be accepted prima facie as a valid one, inthe same breath, it will have to be held that merely because such avalid patent is existing in favour of the Respondent, that byitself, it cannot be held that the Respondent has made out a strongprima facie case of infringement as against the Appellant. We sayso because we too find a distinctive feature of a differentoperation in the Appellant's technology with three valve provisionwith twin plugs operation and the said three valves operation of theengine produce distinctively different result in its operation. Tobe more precise, while the twin plug operation in the Respondent'sinternal combustion engine may have resulted in improved internalcombustion, the three valve technology of the Appellant also with https://hcservices.ecourts.gov.in/hcservices/ twin plug provision produce a distinctive product of its own,different from the claimed invention of the Respondent. 85. Such a distinction as between the patented claim and theinfringed product is well protected under the provisions of thePatents Act, as has been set out in the various decisions we have nohesitation in holding that in the case on hand, even while holdingthat the claim of valid patent at the instance of the Respondent canbe prima facie accepted, the alleged infringement as against theAppellant cannot be held to have been made out at the instance ofthe Respondent. Therefore, there is no case made out for grant ofinterim injunction. However, taking into account of our observationthat the controversy can well be decided in the Suit or in theRevocation Application, we only state that if the Respondent seeksfor an early hearing of the Suit or the Revocation Application, thelearned Judge or the Tribunal, as the case may be, may decide theSuit or the Revocation Application on its own merits uninfluenced bywhatever stated in this Judgment and may decide the case at an earlydate.86. In the light of our above conclusion, the question ofbalance of convenience or irreparable loss does not come into play.Having regard to our above conclusion, we hold that the Respondentis not entitled for an injunction as applied for and the injunctiongranted by the learned Single Judge cannot therefore be continued.Both the appeals stand allowed for the reasons stated herein and theimpugned common order of the learned Single Judge dated 16.02.2008,passed in O.A.No.1357 of 2007 in C.S.No.1111 of 2007 is set asideand the application in O.A.No.1272 of 2007 in C.S.No.979 of 2007stands allowed. There will be no orders as to Costs. All the M.Ps.are closed.Sd/Deputy Registrar (J)/true copy/Sub Asst.Registrarkk https://hcservices.ecourts.gov.in/hcservices/ ToThe Sub Asst. Registrar (O.S)High Court, Madras.+2ccs to Mr.T.K.Bhaskar, Advocate Sr 20770+2ccs to Mr.A.A.Mohan, Advocate Sr 20773KU/GG/(CO)km/19.5. O.S.A.Nos.91 & 92 of 2008