ANALYSING DOCTRINE OF PITH AND SUBSTANCE UNDER THE INDIAN PATENT ACT IN LIGHT OF BAJAJ AUTO LTD V. TVS MOTORS COMPANY LTD[1].

FACTS

In this case, there are two parties where Bajaj Auto Ltd is the plaintiff and TVS Motor Sports Ltd is the defendant, and both companies are engaged in producing motor vehicles and have been granted patents for their technologies. This case gained prominence because there was the involvement of 2 big giants in the industry dealing in the motor vehicle sector. In the present case, there were 2 lawsuits. Firstly, a suit under Section 108 of the Indian Patent Act[1] according to which the plaintiff has sought a permanent injunction against the defendant for the use of technology/invention for which the plaintiff has required a patent over manufacturing, marketing, selling, offering for sale, or exporting 2/3 wheelers. The technology which the plaintiff has includes the TVS’ 125-CC Flame motorcycle which has an internal combustion engine or we can that it is similar to the product of the plaintiff having DTS-i Technology.[2]

For the time being, the plaintiff has applied for orders seeking a temporary injunction prohibiting the defendant from infringing on the plaintiff’s patent till the time matter is pending in court. Besides, this TVS Motor Company had filed another suit which was concerning the threat of infringement under Section 106 of the Indian Patents Act, and they have sought a declaration where they have claimed that the defendant is trying to threaten them by taking unjustified infringement action against the plaintiff for their patent infringement along with permanent injunction so that they can prohibit the defendant from issuing any further threats and thus infringing the plaintiff’s patent.

 While the suit was still pending, the plaintiff sought an order concerning interim injunction so that defendant can be prohibited from interfering with any kind of the plaintiff’s product involving manufacturing and marketing. The marrow and bone between the two parties in this case was a ‘lean burn internal combustion engine’ which involved a twin spark plug configuration. The patent infringement is concerning the use of the engine by the defendant.

The suit was filed by Bajaj in the year 2007 claiming unauthorized use of their patent which was regarding DTSi. They also brought an action for a permanent injunction under Section 108 of the Indian Patents Act 1970, against the TVS from using their technology, which was mentioned in the patent for the manufacturing, marketing, selling, or exporting 2/3 wheelers, and this was also highlighted by the un their proposed 125-CC Flame motorcycle with an internal combustion engine, which was still in the stages of development. The action was also brought by the plaintiff concerning monetary compensation for patent infringement, but the matter was left unsettled by the High Court and later the plaintiff filed for an application relating to a temporary injunction order against the defendant.

When the matter reached the Madras High Court, the court granted a temporary injunction restricting TVS where they cannot take any further orders however they can continue their work regarding the previously taken orders. Against this order, aggrieved TVS had filed a petition before the Hon’ble High Court, which was granted by the division bench of the High Court, and the order was subsequently vacated. Later the petitioner brought this case before the Hon’ble Supreme Court of India against the order of the division bench of the Madras High Court.

 ISSUES

1. Whether the patent which is with Bajaj is valid and is still subsisting? This issue arose after the TVS claimed that it has been using the technology from 1985 in an older model and, hence, the patent belongs to Bajaj’s company
2. Whether there exists any kind of similarities between the technologies developed by both parties.

ARGUMENTS

Plaintiff

The plaintiff contended that their invention qualifies the criteria of novelty as mentioned in Section 2(i)l of the Indian Patents Act, 1970. They claim as there is no similarity in technologies and thus there should be no conflict. Their technology involves an inventive step which is an essential criterion in order to receive a patent and finally, they submitted that since their patent is legitimately qualifying all aspects related to the patent, the claim of the defendant for patent stands invalid as already the plaintiff’s technology has already come in the market 3 years ago and it has established its presence as compared to the defendant.

Defendant

The defendant contended that the plaintiff’s technology had already been granted protection in a US Honda Patent and, that’s why they should not be granted patent protection. The patent claim by the defendant is for two spark plugs with two valves, on the contrary, the plaintiff’s design was including only two spark plugs with three valves for which they already had received a patent. It can be said that both patents are functionally different from each other. In this case, the applicant’s invention has no novelty as compared to its precedent and thus patent is challenged

 LEGAL PROVISION INVOLVED

The present case deals with 2 major legal provisions in the Indian Patents Act, of 1970.

1. Section 108 deals with reliefs in a suit for infringement and which extends to the injunction which is subject to the court deems fit and the plaintiff in the present suit has sought this relief.
2. Section 64(a), (d), and (e) deal with patent revocation. The conditions are laid down for revocation in a counterclaim whenever there is an encroachment suit, the subsets of the same are found in the present case where the patent is previously being used and is registered and the invention is qualifying the criteria of novelty. Section 107 of the Indian patent Act, 1970 gives legitimacy to the provision stating the ground for revocation as mentioned in Section 64 which may be used as a ground of defense in case of an infringement suit[3]. Thus, TVS has presented its counterclaim.

JUDGEMENT

 In this case, the Hon’ble High Court of Madras has barred TVS from launching the projected 125-CC Flame motorcycle which consists of twin spark plug engine technology as clearly after going through the facts and circumstances o the case it is concluded by the court that Bajaj is having the right of exclusive use of the patent and the suit for injunction is maintainable. The criteria of novelty are being satisfied and also the patented product is being marketed to a large extent.

To satisfy that the product is patentable it has to meet 3 requirements which are novelty, non-obviousness, and industrial application and as per the facts of the case, the invention here has qualified all 3 tests to be eligible for patenting. There has been a number of instances where the court has set precedent using purposive construction for determining the unique aspects of an invention that constitute the ‘marrow and bone’ of the invention. According to those experts in the patent in the field of the invention under consideration, it remains to be determined whether or not a patentee intended to match with a particular descriptive word or phrase appearing in a claim which serves as an essential requirement for invention. Thus, even if there is a variant which is having no material influence on how the invention functions, it doesn’t come under the scope of the patentee’s monopoly protection. This is the reason why the court was satisfied that Bajaj has established grounds for an injunction. The court also pointed out that after the patent has been used patent for 5 years it still has 15 years of time to use it further and thus there is the balance of convenience. This is why Madras High Court has allowed the Bajaj for an interlocutory injunction.

The case was decided by the Division Bench of Madras High Court in Appeal where it held that TVS, being the aggrieved party in the Single Judge’s decision, had preferred an appeal before the Division bench. The court has remarked that Bajaj had failed in its obligation to establish a prima facie case related to patent infringement for its ‘twin spark technology’. The court noticed the employment of twin spark plugs in both technologies, the nature of functioning of the DTS-i engine via twin spark plugs, and that of the TVS which was involving the receipt of the air-fuel mixture along with the two different intake valves. On the aspect of the invention as claimed by Bajaj, the engine is plug-centric, on the contrary, the TVS engine is valve-centric. Finally, after hearing both parties the court held that there is no patent infringement, and the order of a single bench is set aside.

Finally, when the matter reached the apex court after the matter was put in appeal by Bajaj. The apex court ordered that TVS may be allowed to sell its motorcycle, however, it must keep in mind the definite record of domestic and international sales and for which the Madras High Court has to appoint a receiver. The matters relating to trademarks, copyright, and patents, the aspect of ‘civil disputes be heard on a day-to-day basis without any adjournments, except in circumstances beyond the control of the parties, would be applied. The final decision will be made within four months of the filing of the suit. This time frame has to be abided by all courts and tribunals in India.

The court has laid down certain principles while dealing with the present judgment

1. For getting relief of interim injunction concerning a patent dispute, it is necessary that the case should establish the prima facie validity of the patent as well as the existence of prima facie infringement, along with irreparable loss and a balance of convenience. In cases concerning an IPR dispute just mere registration of a patent will not meet the criteria but the court will have considered the entire spectrum which includes the strength of the plaintiff’s and defendant’s respective claims
2. A patent may be revoked under Sections 64 and 107 of the Patents Act for challenging the validity of the patent.
3. In regards to the matter concerning the new patent dispute, the court will be quite adequate for the refusal of an interim injunction when it is compared with an old patent.
4.  For checking the presumption regarding the validity of the patent or where an application for the revocation of the patent is still pending and a dispute arises because of an invention that is based on prior art the court will have to take cautious actions in granting an injunction. Thus, the legislature has drafted Sections 12 and 13 of the Indian Patents Act which provides a mechanism for the examination and investigation of patents.

CONCLUSION

Here in this case the Hon’ble Supreme Court has issued guidelines that can be said to bring positive changes to the existing regime. These guidelines that after hearing the suit it shall continue to hear until all the witnesses are examined and unless there exists any exceptional reason for adjournment of the hearing the suit will be heard on the same day. The only circumstances which are outside the control of the parties can become the reason for adjournment of the proceedings. The idea brought by the Supreme Court is to enforce a clause that states that an adjournment if there is any party involved in another court proceeding it shall not be considered a valid reason for an adjournment. If applied all cases pertaining to IP disputes will have to judge on a preferential basis.

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[1] Indian Patents Act, 1970, Sec.108.

[2] What Is DTSi Or Digital Twin-Spark Ignition And How It Works? https://www.bajajautofinance.com/blog/dtsi-or-digital-twin-spark-ignition-and-how-it-works

[3] Indian Patents Act, 1970, Sec.64.

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[1] Bajaj Auto Ltd v. TVS Motor Company Ltd (2009) 12 SCC 103