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Gujarat High Court · body

2009 DIGILAW 54 (GUJ)

Rajnikant Devidas Shroff v. Pharma Chem, Sarigaon

2009-02-02

K.A.PUJ

body2009
JUDGMENT : K.A. Puj, J. The plaintiffs have filed Civil Suit No.5/2003 in the Court of District Judge of Valsad praying for a perpetual order of injunction restraining the defendants from infringing the patent of plaintiff no.1 bearing No.172459 and/or from manufacturing and/or offering for sale the said product namely Phosphorus Pentachloride or applying the invention covered by the said patent no.172459 for manufacture of Phosphorus Pentachloride. The plaintiffs have also prayed for decree of Rs.1,00,00,000/= or in the alternative, the defendants be ordered and decreed to render a faithful account of the profits earned by the defendants by selling Phosphorus Pentachloride and the defendants be ordered and pay to the plaintiffs the said amount as may be found due on said account being taken. 2. The plaintiffs have filed an Application, Exhibit 5 for interim relief in the said suit. The plaintiffs have further filed Application, Exhibit 6 for appointment of Court Commissioner. The learned Joint District Judge, Valsad passed order below, Application Exhibit 6 on 07.08.2004 appointing two persons as Court Commissioners to investigate the apparatus and process used by the defendants in their factory premises situated at G.I.D.C. Sarigaon, Tal. Umargaon, Dist. Valsad and to file a report before the Court to gather the evidence taken by them within the period of one month from the issue of the commission letter. On process being issued, the defendants have appeared through their advocates and filed affidavit-in-reply/written statement to the plaint as well as injunction application on 21.01.2004. The defendants thereafter filed counter claim under Section 104 of the Patents Act, 1970 read with Order 8, Rule 6A of the Code of Civil Procedure, 1908 for revocation of Patent No.172459. The learned Joint District Judge passed an order on 01.04.2005 below Application, Exhibit 50 for transfer of Civil Suit under the provisions of Section 104 of the Patents Act, 1970. Accordingly Civil Suit No.5/2003 along with all the opponents application and proceedings was transferred to this Court under Section 104 of the Patents Act, 1970 and on suit being transferred here, new no., i.e. Civil Suit No.1/2005 is given to the said Suit. 3. In this Suit, the plaintiff no.1 is the Chairman and Managing Director of the plaintiff no.2, the Company. 3. In this Suit, the plaintiff no.1 is the Chairman and Managing Director of the plaintiff no.2, the Company. Plaintiff No.2 is a company incorporated under the provisions of Companies Act, 1956 and it is carrying on business as manufacturers and dealers inter-alia in various types of industrial chemicals. The goods manufactured by plaintiff no.2 are well received in the market both in India as also abroad. The plaintiff no.2 is engaged in research and development of various products and have acquired an enviable reputation in India as well as abroad. Plaintiff no.2 has a manufacturing unit at Plot No.11, G.I.D.C, Vapi, District Valsad, Gujarat. The plaintiff no.2 has been manufacturing various types of chemical products at the said unit. One of products manufactured by plaintiff no.2 is known as Phosphorus Pentachloride, which is being manufactured by plaintiff no.2 in a process in respect of which a patent has been granted under the Patents Act, 1970 to plaintiff no.1. Plaintiff no.1 being the Chairman and Managing Director of plaintiff no.2 has granted a license to plaintiff no.2 to use the said patent. The said product has been manufactured by plaintiff no.2 by applying the said patent. Plaintiff no.2 is the only legal manufacturer of the said product in India. The defendants were alleged to have infringed the said patent by manufacturing the said product by the same process in respect of which, the patent has been granted to plaintiff no.1. 4. Plaintiff no.1 invented the process and apparatus for the production of free flowing dry Phosphorus Pentachloride. Phosphorus Pentachloride is a white to pale yellow powder or fine granular fuming mass with a pungent odour. Its melting point is 166 deg. C to 168 deg. C under pressure and its sublimes. It has specific gravity of 3.6. It reacts violently with water. In the presence of moisture, it decomposes with heat. Prior to the invention, the following procedures were used for manufacturing Phosphorus Pentachloride : (a) By reacting stoichiometric quantities of chlorine with Phosphorus Trichloride in a solvent medium. (b) By direct chlorination of Phosphorus Trichloride with chlorine gas or liquid chlorine. (c) By passing chlorine gas in suspension of red phosphorus in a suitable solvent medium. (d) By reaction between Phosphoryl chloride carbonyl chloride and carbon at higher temperatures, say in the region of 300 to 500 deg. (b) By direct chlorination of Phosphorus Trichloride with chlorine gas or liquid chlorine. (c) By passing chlorine gas in suspension of red phosphorus in a suitable solvent medium. (d) By reaction between Phosphoryl chloride carbonyl chloride and carbon at higher temperatures, say in the region of 300 to 500 deg. C. (e) By reaction of phosphorus trichloride and chlorine under pressure in an autoclave. In the batch process, phosphorus trichloride is usually added to solvent medium in liquid phase, which may be carbon tetrachloride, carbon disulfide, phosphorus oxychloride or any other medium. Chlorine gas is passed slightly in excess of stoichiometric quantities in a reactor of suitable material of construction like lead, nickel or glass lined, equipped with heating and/or cooling arrangements, stirrer, reflux condenser and the like. Solid Phosphorus pentachloride remains suspended in the liquid medium. After the completion of the reaction, the product crystals are filtered out, the solvent is separated and the crystals are dried. In the continuous process, phosphorus trichloride in solvent medium is run in a counter current manner against gas/liquefied chlorine usually in a lead, nickel or glass lined column. Phosphorus pentachloride is collected from the bottom of the reactor tower as solid material suspension in solvent which may be separated by filtration subsequently from the solvent and used. 5. It is the case of the plaintiffs that the aforesaid conventional method suffered from various drawbacks. To get over such drawbacks, plaintiff no.1 claimed to have invented a process the object of which is to produce free flowing dry phosphorus pentachloride of high purity without involving the various drawbacks. The invention of plaintiff no.1 was also with the object of manufacturing phosphorus pentachloride directly in the form a line, free flowing powder devoid of any lump formation which can be readily used without requiring further processing after the completion of the reaction. Plaintiff no.1 also invented an apparatus for carrying out the process according to the said invention. Plaintiff no.1, therefore, invented a process to achieve the said objects by a novel route by synthesising Phosphorus Pentachloride using a vapour phase reaction between phosphorus trichloride with chlorine gas and by devising an apparatus to carry out the said process with a view to eliminate the disadvantages and the drawbacks in the conventional method. 6. The plaintiff no.1, therefore, filed complete specifications and applied for grant of a patent whose specifications were filed on 15.05.1991. 6. The plaintiff no.1, therefore, filed complete specifications and applied for grant of a patent whose specifications were filed on 15.05.1991. The Application was processed by the Patent Office, Government of India and plaintiff no.1 was granted a patent vide No.172459 dated 15.05.1991 relating to an invention for a process and apparatus for the production of free flowing dry Phosphorus Pentachloride. The plaintiff no.1 made several claims in respect of his inventions which are enumerated in the plaint of the Suit. The said patent granted to plaintiff no.1 is valid and subsists. Plaintiff no.1 has allowed plaintiff no.2 as Licensee to accept the said patent to manufacture the said product which is being done by plaintiff no.2 on an extensive scale. Plaintiff no.2 is the only manufacturer of the said product in India. 7. In about June 2003, the plaintiffs came to know the said product being manufactured by the defendants and being offered for sale in the market. On inquiry, the plaintiff found that the said product has been for some time manufactured by the defendants by applying the said invention in respect of which the said Patent No.172459 has been granted to plaintiff no.1 There is no other legal manufacturer in India, who is manufacturing the said product by another method. It is obvious that the defendants are infringing the aforesaid patent of plaintiff no.1, as they are manufacturing the said product by applying the said invention covered by the said patent. The defendants do not have any research or development facility nor they have any background in research and development. The process for manufacture of phosphorus pentachloride is laborious and requires years of experience and expertise in Phosphorus Chemistry. The said product is very toxic and corrosive. A very specially designed equipment is required in the manufacture of the said product. The defendants are the close relatives of one Shri Kanti Koli who was Chemist working with the plaintiff no.2 till 02.10.1984. He had joined the service of plaintiff no.2 on 29.09.1978. The said Kanti Koli has been in contact with the staff members of plaintiff no.2 and more particularly, with Shri Chhagan Varli, who was then working as Head of the Department with plaintiff no.2 till 11.03.1991. He had joined the services of plaintiff no.2 on 01.10.1970. Shri R.M. Patel was then working as a Senior Chemical Engineer with plaintiff no.2 till 21.06.1994. He had joined the services of plaintiff no.2 on 01.10.1970. Shri R.M. Patel was then working as a Senior Chemical Engineer with plaintiff no.2 till 21.06.1994. R.M. Patel joined the services of the proprietary concern of Kanti Koli. Kanti Koli stole the invention of plaintiff no.1 with the help of R.M. Patel and applied the said invention without the plaintiff's license and manufactured the said produce. The plaintiff took legal action by filing Suit in the High Court of Mumbai. The said unit of Kanti Koli manufacturing Phosphorus Pentachloride had been closed and sealed and is placed under the control of Receiver appointed by Bombay High Court. Thus the said Kanti Koli is behind the manufacture of Phosphorus Pentachloride through his close relatives. The defendants have stolen the invention of plaintiff no.1 through Kanti Koli who was instrumental in the said invention of plaintiff no.1 and thereby Kanti Koli has been instrumentally diverging the said invention and encouraging the defendants to manufacture the said produce as he was by an order of the High Court of Bombay stopped from using the said invention. The defendants have applied the said invention without the plaintiff license and even manufacturing the said product and offering the same to members of the public. 8. It is therefore the case of the plaintiff that by manufacturing the said product Phosphorus Pentachloride and by applying the said invention covered by the said patent, the defendants have infringed the patent of plaintiff no.1 bearing no.172459 and they have also copied the invention in respect of the apparatus which is also covered by the said patent. The price at which the defendants are offering the said product shows that the product manufactured by the defendant is as per the invention of plaintiff no.1. Under these circumstances, the plaintiff were constrained to file the present suit before this Court and they are entitled to a perpetual order of injunction as well as a Decree for Rs.1,00,00,000/- as they have suffered damages. 9. The defendants have filed written statement and/or affidavit-in-reply to the plaint of the suit as well as injunction application and denying the facts stated and averments made in the plaint of the suit as well as injunction application. 9. The defendants have filed written statement and/or affidavit-in-reply to the plaint of the suit as well as injunction application and denying the facts stated and averments made in the plaint of the suit as well as injunction application. The defendants have contended that adequate relief has been claimed by the plaintiffs in Para 21a of the plaint, Exhibit 1 has been claimed in the injunction application, Exhibit 5 vide Para 17. Therefore in fact the relief which has been prayed by the plaintiffs in the injunction application pending suit is in the nature of the relief which can be granted by the Court against the defendants. On final disposal of the suit after adducing the evidences and subject to evidences and as such under the guise of injunction application, pending suit, relief has been claimed by which decree is passed in favour of the plaintiff without adducing evidences. While deciding the interim injunction application if identical relief is claimed as claimed in the original suit for passing decree, then such relief cannot be granted pending suit in the injunction application. 10. It is further contended from fact that the plaintiffs have claimed damaged and/or compensation and that any loss that may be caused can certainly be compensated in terms of money and hence the main ingredients for the purpose of granting interim relief are not in existence. The plaintiffs have not incurred any loss which cannot be compensated in terms of money. The defendants have also contended that under Section 53(1) of the Patents Act, 1970 there is stipulation of time limit for life saving drugs and it appears that such time limit with the so called patent of the plaintiff has come to an end on the date of the Suit. It is further contented that modifications has been made in the Patent Act in 2004 and as per the said amendment, provision for processing patent has been deleted. Manufacture of PC15 which is made by plaintiffs is derived from reaction of PC13 and CL2. Any invention of the said chemical has not been made by the plaintiffs. Further it is the case of the plaintiffs that new process which has been invented by the plaintiffs for the manufacture of Phosphorus Pentachloride, the plaintiffs had restricted the patent with regard to the said new process. Any invention of the said chemical has not been made by the plaintiffs. Further it is the case of the plaintiffs that new process which has been invented by the plaintiffs for the manufacture of Phosphorus Pentachloride, the plaintiffs had restricted the patent with regard to the said new process. However the process which has been stated by the plaintiffs has been reprinted/reported in the Encyclopedia of Chemical Technology by Kirk-Othmer in Volume 10 at Page 479. In United States, Patent 19, Foreign Patent documents, the description of process in preparation of Phosphorus Pentachloride is given in volume 4 of Industrial Chemistry, 3rd Edition where the process like that of the plaintiffs is referred to and similar processes are stated. Thus the say of the plaintiffs of the invention of new process for PCL5 is proved to be wrong in view of the reference made in the Encyclopedia volume for processing. It is therefore contended that the plaintiffs have not made any new invention. Details of processes which are being stated to be invented by the plaintiffs have been described in Encyclopedia before many years and in these circumstances where the present process is referred to in the Encyclopedia, averments of the plaintiff i.e. infringement of the so called patent through such process is not proved prima facie. In these circumstances, till the evidence for so called breach of the patent is adduced in the Court, the plaintiff cannot prove any such fact prima-facie and therefore the application for injunction cannot be allowed. 11. It is further contended that the 3 guidelines enumerated in Rule 1 and 2 of Order 391 of Civil Procedure Code are required to be established originally before seeking interim injunction in reference to the prayer for such temporary injunction. The said process being followed by the plaintiff has been referred to in the Encyclopedia before many years and in this circumstances, the averments regarding infringement of so called patents of the plaintiffs by the defendants are not proved prima-facie. Further there are basic differences in the process of production of Phosphorus Pentachloride by the plaintiffs and defendants. The basic differences in the processes between the plaintiffs and defendants are enumerated by the defendants in their written statement and also in their written arguments. Based on this, it is strongly urged before the Court that the Injunction Application deserves to be rejected. 12. The basic differences in the processes between the plaintiffs and defendants are enumerated by the defendants in their written statement and also in their written arguments. Based on this, it is strongly urged before the Court that the Injunction Application deserves to be rejected. 12. The defendants have filed their counter claim vide Exhibit 51, inter-alia contending that on the infringement action having been taken by the plaintiffs, the defendants undertook a thorough and detailed search of various patents registered in various countries right from 1932 till date. The defendants have given a detailed description of various processes patented for manufacturing of PCL5 and based on the said process, they have contended that the process adopted by the plaintiffs for manufacturing PCL5 by heating PCL3 to its boiling point to convert into vapour and thereafter reacting it with CL2 gas and conditioning it to procure PCL5 is devoid of the basic characteristics for the patent to be registered as it is not an invention within the meaning of Section 3 of the Patents Act, 1970. It is further contended that patenting PCL5 by reacting PCL3 and CL2 is a very old process and hence the plaintiff's process over manufacture of PCL5 could not be registered. 13. The plaintiffs filed their reply to counter claim vide Exhibit 58 denying the averments made in the counter claim and contending, inter-alia, that the main object of the plaintiff's invention is to produce free flowing dry phosphorus pentachloride of high purity without involving drawbacks existent in the conventional methods. Another object of the plaintiff's invention is to manufacture PCL5 directly in the form of fine free flowing powder devoid of any lump formation which can be readily used, without requiring further processing after completion of the reaction. The plaintiff's invention process to achieve this objective by the novel route of synthesising PCL using vapour reaction of phosphorus dry chloride and chlorine gas and by devising an apparatus to carry out the said process with a view to eliminate the disadvantages/drawbacks prevalent in the conventional process. It is therefore contended that pith and marrow of the plaintiff's invention is a vapour based reaction in dry description to the liquid phase reaction in the conventional methods. It is further contended that unlike other conventional methods in the process invented by the plaintiffs, after reaction Phosphorus Pentachloride is directly available in solid form without involving any filtration. It is therefore contended that pith and marrow of the plaintiff's invention is a vapour based reaction in dry description to the liquid phase reaction in the conventional methods. It is further contended that unlike other conventional methods in the process invented by the plaintiffs, after reaction Phosphorus Pentachloride is directly available in solid form without involving any filtration. None of the patents referred to by the defendants is using plaintiff's inventive process, i.e. vapour phase reaction of phosphorus dry chloride and hence the process claimed by the plaintiffs in the subject patent is completely different. 14. The defendants thereafter filed an application, Exhibit 60 for production of documents pertaining to Japanese patent, published on 08.03.1991 being No. JP3-54106. It, according to the defendants has a material impact on the outcome of the suit for infringement as well as the counter claim for revocation of the plaintiff's patent. 15. The plaintiffs filed their reply dated 07.08.2006 opposing production of documents and contending that the process claimed in the said Japanese patent is very different from the patented process of the plaintiffs. The plaintiffs in their reply filed on 29.09.2006 contended that they have taken opinion dated 04.08.2006 from Dr. Navin V. Shah., Ph.D. (Manchester) and based on the English translation of the Japanese patent and the patents of the plaintiffs, he opined that the Japanese process is totally different from the patented process of the plaintiffs. 16. The plaintiffs have also moved an application for production of documents on 22.02.2008. A list of documents along with documents are attached with the said application. The list, inter-alia contains judgment and decree dated 14.06.2007 passed by the Additional District Judge and Presiding Officer, Second Fast Track Court at Vadodara in Special Civil Sit No.1 of 2003, order dated 14.09.2007 passed by this Court in Civil Application for stay No.10180 of 2007 in First Appeal No.3175 of 2007 and an order dated 19.02.1999 by the Bombay High Court in Contempt Notice of Motion no.741 of 1996 in Suit No.95 of 1995. 17. The defendants have filed further application on 28.08.2008 for production of additional documents along with list of documents which inter-alia includes copies of U.S. certificate patents and end-user certificates of experts. 18. 17. The defendants have filed further application on 28.08.2008 for production of additional documents along with list of documents which inter-alia includes copies of U.S. certificate patents and end-user certificates of experts. 18. The plaintiffs have filed reply affidavit on 04.09.2008 raising an objection that the said application is nothing but an abuse of the process of the Court and has been moved with a ulterior motive to protract the decision of the application for temporary injunction so as to enable them to continue to infringe the patent of the plaintiffs. The plaintiffs have also contended that documents produced by the defendants do not render the claims of the patent of the plaintiffs oblivious or lacking an inventive step. The difference between the US patents and the essential features of the invention claimed by the plaintiffs are tabulated in the said reply/affidavit. 19. The defendants have filed their affidavit-in-rejoinder on 19.09.2008 offering certain clarifications in respect of the objections raised by the plaintiffs against the U.S. patents and asserting that PCL5 is a versatile raw material for manufacture of life saving drugs. The defendants have also referred to letters submitted from reputed drug manufacturing companies stating that material used for manufacture of their drug is PCL5. 20. In light of the above pleadings of the parties, Mr. Mihir Thakore, the learned Senior Counsel appearing with Mr. Sandeep Singhi of M/s. Singhi and Co. for the plaintiffs and Mr. Mihir Joshi, learned Senior Counsel appearing with Mr. Manav Mehta as well as Mr. Unmesh D. Shukla, the learned Advocate have made their submissions on behalf of the parties. 21. Mr. Mihir Thakore, learned Senior Counsel appearing for the plaintiffs has submitted that the plaintiffs are the inventors and owners of the process for manufacture of free flowing dry Phosphorus Pentachloride (PCL5) and have obtained a Patent No.172459 for this process. He has further submitted that the Controller of Patents had issued Certificate on 14.05.1991 and the term of the patent was 14 years. He has further submitted that the Controller of Patents had issued Certificate on 14.05.1991 and the term of the patent was 14 years. There is an amendment in the Act in 2002 and Sub-section 1 of Section 53 was amended with effect from 20.05.2003 which says that the term of every patent granted, after the commencement of the Patent (Amendment Act, 2002) and the term of every patent which is not expiring and has ceased to have effect, on the date of such commencement, under this Act, shall be 20 years from the date of filing of the Application for patent. Hence the patent granted to the plaintiffs shall remain in existence till 14.05.2011. He has further submitted that the plaintiffs invention relates to the process and apparatus for the production of free flowing dry Phosphorus Pentachloride of high purity, and in particular, of fine particular form, which is readily usable. Phosphorus Pentachloride is mainly used as a productive chlorinating agent in organic synthesis and is presently used as a versatile raw material in the synthesis of life saving bulk drugs as well as in the manufacture of dye stuff. It also acts as catalyst for condensation, cyclisation reaction and in improving grain structure of light metal casting. Phosphorus Pentachloride is conventionally made on a commercial scale either by batch or continuous process. The plaintiffs have invented a new process under which free flowing dry Phosphorus Pentachloride of high purity, without involving drawbacks of conventional method can be produced. Under this process, Phosphorus Pentachloride is differently processed in the form of fine free flowing powder devoid of any lump formation which can readily be used without requiring further processing after completion of the reaction. He has therefore submitted that looking to this inventive step as well as invention, the patent was granted to the plaintiffs in 1991 and that has remained unchallenged. The defendants have made an attempt to imitate the process of the plaintiffs and thereby infringed the valuable right granted to the plaintiffs under the aforesaid patent. He has therefore submitted that all the requirements and pre-requisites of granting interim injunction are present and hence this Court, should allow the present application for interim injunction. 22. In support of his submissions, Mr. He has therefore submitted that all the requirements and pre-requisites of granting interim injunction are present and hence this Court, should allow the present application for interim injunction. 22. In support of his submissions, Mr. Thakore relied on the decision of Shillito v. Larmuth and Co., 1885 (II), Reports of Patent Cases, Page 1, the Chancery Court of the County Palatine of Lancaster, Manchester District, wherein the Court was concerned with a case where the plaintiffs brought an action for injunction to restrain the infringement of a patent vested in them, and moved for an interlocutory injunction. At the time of the hearing of the motion, the patent was 10 years old. The defendants by their affidavits denied the novelty of the plaintiff's patent and also denied that what they were doing amounted to an infringement. The Court held that as the patent was 10 years old and its novelty had not previously been challenged, it must, for the purpose of an interlocutory motion, be treated as a good patent and that as the plaintiffs had established a prima facie case of infringement, they were entitled to an interlocutory injunction. 23. Mr. Thakore further relied on the decision of Farbwerke Hoechst Aktiengesellschaft vormals Meister Lucius & Bruning Corporation etc. v. Unichem Laboratories and others, AIR 1969 Bombay 255, wherein it is held that in an action for infringement of plaintiff's patent in respect of the process of manufacture of a medicinal product where the defendants admit that the drug which they manufacture under different trade name is the very drug in respect of which the plaintiffs have obtained their patent, a presumption that the defendants drug has been produced by the patented process of which it is alleged to be an infringement can be drawn against the defendants under the general provision contained in Section 114 of the Evidence Act. Moreover, though the general burden of establishing the case of infringement undoubtedly rests on the plaintiffs in accordance with Section 101 of the Evidence Act, the burden of providing a particular fact, viz., the process by which the defendant's product is being prepared by the defendants would be on the defendants, since that is a fact "especially" within their knowledge within the terms of Section 106 of the Evidence Act. It is impossible for the plaintiffs to know by what precise process that product is being prepared by the defendants and it is precisely to that sort of a case that Section 106 is intended to apply. The Court therefore took the view that in view of the admissions made by the defendants, it became unnecessary for the plaintiffs to lead any evidence at all to prove infringement on the part of the defendants. As stated in Section 58 of the Evidence Act, facts which are admitted need not be proved. 24. Mr. Thakore further relied on the decision of the Incandescent Gas Light Company, Ltd. v. The De Mare Incandescent Gas Light System, Ltd. and Others, 1896 (XIII) No.20, Reports of Patents, Design and Trade Mark cases, wherein the High Court of Justice – Queen's Bench Division was concerned with a case where the plaintiffs in whom this patent had become vested, commenced an action for infringement against the defendants, who were threatening to make and sell fringes of threads to be used as illuminant appliances. The substances which the defendants threatened to use for making the fringes consisted of certain salts of zirconium and magnesium, and, as alleged by them, nitrate of erbium, but, as alleged by the plaintiffs from analyses, a soluble salt of the oxides of the yttrium group. The process was substantially that of the plaintiffs, by impregnating with a solution of the salts, and after turning off the carbons of the threads in the flame, leaving an earthy residuum in the form of threads; but the ammoniation was omitted. The defendants contested the validity of the patent on several grounds. The process was substantially that of the plaintiffs, by impregnating with a solution of the salts, and after turning off the carbons of the threads in the flame, leaving an earthy residuum in the form of threads; but the ammoniation was omitted. The defendants contested the validity of the patent on several grounds. The Court held that the true construction of the Patentee's claim was that it was for the continuation of the various essential elements in the process described, the manufacture of the hood out of the substances mentioned by the means of impregnation with the blends of salts within the descriptions and proportions indicated by the Specification, including all such variations of proportion or of strength of solution as were fairly within the Specification as it would be understood by a competent workman, and brought into its final condition by being put into the burner; also that the patent was valid, there being good subject-matter, with reference to what was known at its date, novelty (all the alleged anticipations failing) and great utility, and that sufficient directions were given in the Specification. It was held by the Court that the defendant had taken the substance of the invention and had infringed. 25. Mr. Thakore further relied on the decision of Marconi v. British Radio Telegraph and Telephone Company Ltd., 1910 Reports of Patent, Design and Trade Mark Cases, Page 181, wherein the High Court of Justice – Chancery Division was concerned with a patent granted in 1900 for "improvements in apparatus for wireless telegraphy". One of the claims was for "a transmitter for electric wave telegraphy consisting of a spark producer having its terminals connected through a condenser with one circuit of a transformer the other circuit being connected to a conductor and to earth or a capacity the time period of electrical oscillations in the two circuits being the same or harmonies of each other". The invention had greatly increased the distance to which messages could be sent. In an action for infringement of the Patent, and two later Patents, the plaintiffs alleged infringement by the sale of a transmitter, the circuits of which were linked together by an auto-transformer, instead of by a two-coil transformer, as described and shown in the Specification and Drawings. The defendants alleged anticipation, want of subject matter and prior grant. In an action for infringement of the Patent, and two later Patents, the plaintiffs alleged infringement by the sale of a transmitter, the circuits of which were linked together by an auto-transformer, instead of by a two-coil transformer, as described and shown in the Specification and Drawings. The defendants alleged anticipation, want of subject matter and prior grant. They contended that the autotransformer used by them did not come within the Claims of Specification. The Court held that invention consisted in the substitution for a single circuit, in both transmitter and receiver, of a pair of circuits, one radiating or absorbing readily, and the other oscillating persistently and being a conserver of energy, the two circuits being tuned together, and linked by means of a transformer, so that electrical oscillations in the closed and persistently oscillating circuit built up, and maintained, similar oscillations in the open and readily vibrating secondary, and the two circuits of the receiver, with similar interaction, being tuned to the same time-period as the circuits of the transmitter, that the invention was useful, and the Patent was valid, and that the Claim was for a new combination producing a new result, and the two-coil transformer was not an essential part of the invention; and the defendants, notwithstanding the fact that they had used an auto-transformer, had infringed. Judgment was given for the plaintiff with costs, except in so far as increased by the inclusion of the two later Patents, as to which the action was ordered to stand over, with liberty to apply. The costs of three counsels were allowed, but costs on the higher scale were not allowed. An injunction and an inquiry as to damages were granted, and delivery up ordered, but, as to instruments already installed on board ship, the operation of the injunction and order for delivery up was directed to be stayed if notice of appeal was given. 26. Mr. Thakore further relied on the decision in the case of National Research Development Corporation of India, New Delhi v. The Delhi Cloth & General Mills Co. 26. Mr. Thakore further relied on the decision in the case of National Research Development Corporation of India, New Delhi v. The Delhi Cloth & General Mills Co. Ltd. and Others AIR 1980 Delhi 132, wherein it held that for grant of temporary injunction, principles applicable to the infringement of Patent actions are that there is a prima facie case, that the patent is valid and infringed, that the balance of convenience is in favour of the injunction being granted and that the plaintiff will suffer an irreparable loss. It is also a rule of practise that if a patent is a new one, a mere challenge at the Bar would be quite sufficient for a refusal of a temporary injunction, but if the patent is sufficiently old and has been worked, the Court, would, for the purpose of temporary injunction, presume the patent to be valid one. If the patent is more than 6 years old and there has been actual user it would be safe for the Court to proceed upon this presumption. Where from the prior correspondence between the defendant on the one side and the plaintiff, the assignee of a patentee and the original inventors on the others showed that the defendant did not have the knowhow of the patented process and that they admitted the validity of the patent, their defence that they developed their own technology and were working the process successfully was disbelieved and a temporary injunction restraining them from violating the plaintiff's patent was granted pending suit for permanent injunction rendition of accounts and damages for infringement of the patent. 27. Mr. Mihir Joshi, the learned Senior Counsel appearing for the defendants, on the other hand has strongly opposed the plaintiff's application for interim injunction and submitted that the plaintiffs have not invented any new patent and it can be said without any doubt or fear of contradiction that the inventive steps alleged to have been taken by the plaintiffs are nothing but all pre-existing steps and it will not assume the character of any new inventive step. He has further submitted that the defendants have produced adequate material before the Court showing that this very process has been adopted by several other companies in India as well as elsewhere and they were manufacturing Phosphorus Pentachloride even prior to the date on which the patent was granted to the plaintiffs. He has further submitted that the defendants have produced adequate material before the Court showing that this very process has been adopted by several other companies in India as well as elsewhere and they were manufacturing Phosphorus Pentachloride even prior to the date on which the patent was granted to the plaintiffs. He has further submitted that the defendants have already filed an application for revocation of the patent granted to the plaintiffs under Section 64 of the Patents Act. Section 64 enumerates various circumstances under which the patent granted can be revoked. Simply because complete specification is filed with the Controller of Patents, it would not entitle the plaintiffs to claim registration of the Patent. Section 64(1)(d) says that the subject of any claim of the complete specification is not an invention within the meaning of this Act. He has further submitted that the claim of the complete specification of the plaintiffs is not new and it is publicly known or publicly used in India before the date of claim and it was already published in India as well as elsewhere in many of the documents referred to in Section 13 of the Act. Hence the plaintiff's patent can be revoked under Section 64(1)(e) of the Act. He has further submitted that the plaintiff's claim of complete specifications is very obvious and does not involve any inventive steps as it was publicly known or publicly used, in India or elsewhere before the date of plaintiff's claim. Hence the plaintiff's claim can also be revoked under Section 64(1)(f) of the Act. He has further submitted that even if it is assumed that the patent of plaintiff is valid, the process adopted by the defendants and the apparatus used to manufacture of Phosphorus Pentachloride by the defendants is entirely different and in respect of this claim, the Court Commissioner has also given his Report. The defendants have also produced the expert's opinion on this subject. He has therefore submitted that the injunction application moved by the plaintiffs deserves to be rejected. Not only this, the entire suit filed by the plaintiffs is required to be dismissed with costs. 28. Mr. Joshi relied on the decision in the case of M/s. Standipack Pvt. Ltd. and another v. M/s. Oswal Trading Co. He has therefore submitted that the injunction application moved by the plaintiffs deserves to be rejected. Not only this, the entire suit filed by the plaintiffs is required to be dismissed with costs. 28. Mr. Joshi relied on the decision in the case of M/s. Standipack Pvt. Ltd. and another v. M/s. Oswal Trading Co. Ltd. AIR 2000 Delhi 23, wherein it is held that there are cases in which it is held that when an application is filed seeking for revocation of the patent and questioning the validity of the patent, the Court should not grant an injunction. It is settled law that in an action for infringement of a patent an injunction would not be granted where the validity of the patent itself has been questioned and a revocation petition has been filed. The Court has referred to the decision of the Madras High Court in Manicka Thevar v. M/s. Star Plough Works, AIR 1965 Mad 327 at 328, wherein it was held that if from the objections raised by the defendant, it is clear that a serious controversy exists as to whether or not the invention involves any new inventive skill having regard to what was known or used prior to the date of the patent, courts would not grant an injunction restraining the defendant from pursuing his normal business activity. It was also held that an interim injunction would not be granted if the defendant disputes the validity of the grant. In M/s. Niky Tasha India Pvt. Ltd. v. M/s. Faridabad Gas Gadjets Pvt. Ltd., AIR 1985 Delhi 136 at 140 (supra), it was observed by the Court that no junction should be granted when there is a serious question of the validity of the design to be tried in the Suit and an application for cancellation has been made. 29. Mr. Joshi further relied on the interim order in the case of United Phosphorus Limited v. Watsol Organics Limited, Hyderabad, passed by the Court of the III Additional Chief Judge, City Civil Court vide its order dated 26.09.2007 wherein it is held while refusing to grant injunction, there cannot be any connection from the material produced to show that the patent process is infringed by the respondent. The Court held that there is no prima facie case in favour of the plaintiffs. The Court held that there is no prima facie case in favour of the plaintiffs. The Court further held that for over long period of time, the respondents are in the process of manufacturing and sale of PCL5 having its own methodology and equipments which may be similar in certain area to that of the petitioner. The petitioner can get damages as an appropriate relief if it is successful in establishing that its patent right is violated. The sale of the respondent's product will be evidenced by the log book of the factory, store register, register of inventories and annual statement of accounts upon which damages can be ascertained without much difficulty. The Court held that balance of convenience is in refusing the injunction and that the petitioner will not sustain any irretrievable damage. 30. Mr. Joshi further relied on the decision of Garware-wall Ropes Ltd. v. M/s. Techfab India and Others, 2008 (2) G.L.H. 721 , wherein the Division Bench of this Court has held that in the suit for infringement, the plaintiff has to establish that he would suffer an irreparable injury and compensation for loss and damage would not be an adequate remedy. In the case before the Court, there were controversies between parties as to whether or not the invention made by the plaintiff is new or it involves inventive skills. It is also contested that if the patent is new, its validity is not established in judicial proceedings. Further serious controversies were raised regarding validity of the patent granted by the Controller by filing application for revocation and establishing the counter claim. The plaintiff is also quantified damages in the plant if the injunction is not granted. Under these circumstances, it was held that injunction cannot be granted. 31. Mr. Joshi further relied on the decision of the Dhanpat Seth & Ors. v. M/s. Nil Kamal Plastic Crates Ltd. AIR 2008 Himachal Pradesh 23, wherein it was held that mere fact that the device is made of polymeric material instead of bamboo is not an inventive step involving any novelty. There is nothing new about the process of manufacturing. Therefore mere grant of patent in favour of the plaintiffs by itself does not mean that plaintiffs were entitled to any injunction. There is nothing new about the process of manufacturing. Therefore mere grant of patent in favour of the plaintiffs by itself does not mean that plaintiffs were entitled to any injunction. This factor can be taken into consideration and would be a relevant factor but grant of patent would not ipso facto entitle plaintiffs to grant of an junction without taking into consideration other relevant factors. In fact, Section 107 clearly provides that in any suit for infringement of patent every ground on which it may be revoked under Section 64 shall be available as a ground for defence. Therefore the defendant is entitled to argue before the High Court that the patent granted is not valid. Thus when the device developed by the plaintiffs was in fact the result of traditional knowledge and aggregation/duplication of known products such as polymers and cannot be said to be an invention, the plaintiffs, would not be entitled to any injunction. 32. Having heard the learned Advocates appearing for the parties and having considered the rival submissions in light of the documents produced and judgments cited, the Court is of the view that the plaintiffs deserve for interim injunction and it is accordingly granted. 33. The plaintiffs were granted Patent No.172459 on 14.05.1991. It is for the period of 14 years. By virtue of this term of 14 years, coupled with an extension upto the period of 20 years from the date of initial grant of patent, in view of the amendment made in Section 53(1) of the Patents Act, the plaintiff's patent shall remain in operation till 14.05.2011. Several attempts were made to challenge the validity of the patent granted to the plaintiffs. Way back in 1995, the issue arose before the Bombay High Court in Civil Suit No.275 of 1995 and the Court vide its interim order dated 15.03.1995 restrained the defendants namely Sandhya Dyes and Chemicals and anothers from infringing the patent of plaintiffs bearing No.172459. Not only this, the Bombay High Court has passed an order on 19.02.1996 in Contempt notice of Motion No.741 of 1996 observing therein that the defendants were earlier restrained from manufacturing Phosphorus Pentachloride by using the same process as they were developing and heating Phosphorus Trichloride after mixing it with chlorine and then cooling down the vapors into crystals. Not only this, the Bombay High Court has passed an order on 19.02.1996 in Contempt notice of Motion No.741 of 1996 observing therein that the defendants were earlier restrained from manufacturing Phosphorus Pentachloride by using the same process as they were developing and heating Phosphorus Trichloride after mixing it with chlorine and then cooling down the vapors into crystals. The Court therefore, restrained them from manufacturing Phosphorus Pentachloride for a period of four weeks from the date of the said order. The Division Bench of the Bombay High Court in an appeal preferred by the defendants being Appeal No.346 of 1996 had refused to interfere in the order passed by the learned Single Judge. 34. The issue again arose before the Additional District Judge and Presiding Officer, 2nd Fast Track Court at Valsad in Civil Suit No.1 of 2003 filed by the present plaintiffs against M/s. Lucky Chemicals Industries and while decreeing the suit in favour of the plaintiffs, the learned Additional District Judge has held that the plaintiffs are the real owners of Patent No.172459 of PCL5 as it is a novel invention by virtue of intellectual property. It is also held that the person who is inventing something has a dominion over the right of a patent which has been registered in his name. The method and manner of producing PCL5 is different and novel. It can be challenged by showing any cogent evidence. The Court therefore restrains the defendants by perpetual injunction from infringing the patent of the plaintiffs in any manner and/or from manufacturing or offering for sale the product namely PCL5 or applying the invention covered by the said patent. It is true that this judgment and decree of the learned Additional District Judge, Valsad is challenged before this Court in First Appeal No.3750 of 2007 and an application for stay of the operation of the said judgment and decree was preferred by the said defendants. However the Division Bench has not granted any stay against the said judgment and decree and a condition was imposed on the original plaintiffs to deposit a sum of Rs.8,00,000/- with the Court for the initial period from 15.06.2007 to 14.10.2007, i.e. the period during which the injunction has operated and continued to operate. However the Division Bench has not granted any stay against the said judgment and decree and a condition was imposed on the original plaintiffs to deposit a sum of Rs.8,00,000/- with the Court for the initial period from 15.06.2007 to 14.10.2007, i.e. the period during which the injunction has operated and continued to operate. This shows that the validity of the plaintiff's patent is judicially examined by the Court and any attempt made by the third party to infringe the plaintiff's patent was discouraged by the Court. 35. It is true that the Additional Chief Judge, Hyderabad in his order dated 26.09.2007 passed in Interim Application No.3253 of 2007 in original Suit No.481 of 2007 filed by the present plaintiffs against M/s. Watsol Organics Limited has not granted stay against the defendants. However the Court in that case has found that the defendants are in the process of manufacturing and sale of PCL5 having its own technology and equipment similar in certain areas to that of the plaintiffs. The Court also found as a matter of fact that there was no indication from the material produced as to whether the patented process of the plaintiffs was infringed by the defendants. Since the said interim order is passed on the basis of the materials produced before the Court, the same is not applicable to the facts of the present case. 36. It is also important to note that the patent was granted on 14.05.1991 and 18 years have passed since then. Thus, it is an old patent and the plaintiffs came to know only in 2003 that the defendants have been manufacturing PCL5 by applying the same process. By that time, the plaintiff's patent was well established and hence it cannot be said to be a new patent which can be challenged or disputed either by way of separate proceedings or by filing an application for revocation of grant of patent under Section 64 of the Patents Act. The instances cited by the defendants are only with a view to establish before the Court that the plaintiff's patent is not an invention nor any inventive step is involved therein and it is nothing but a prior art. However, they are clearly distinguished and differentiated by the plaintiffs in their pleadings. The judgments relied on by the defendant's counsel are also distinguishable on facts. However, they are clearly distinguished and differentiated by the plaintiffs in their pleadings. The judgments relied on by the defendant's counsel are also distinguishable on facts. It is true that in M/s. Standipack Pvt. Ltd. and another v. M/s. Oswal Trading Co. Ltd. (supra), the Delhi High Court has taken the view that injunction would not be granted where the validity of the patent itself has been questioned and revocation petition has been filed. Here in the present case, the defendants have raised an issue regarding validity of the patent and also revocation application is filed in the pending suit which is yet to be decided. However this very aspect has been examined earlier by the Bombay High Court and also by this Court. The Bombay High Court has granted injunction restraining the defendants from manufacturing PCL5 by applying the process of the plaintiffs and this Court has refused to grant stay against the judgment and decree passed by the District Court. Thus, simply because a revocation application is pending, on that ground, the injunction cannot be refused, despite the fact that the plaintiffs have made out a prima-facie case for grant of such interim injunction. On the contrary, Delhi High Court in the case of M/s. National Research Development Corporation (supra) has taken a view that if a patent is new one, mere challenge at the Bar would be quite sufficient for refusal of temporary injunction but if the patent is sufficiently old, and has been worked, the Court, would, for the purpose of temporary injunction, presume the patent to be valid one. In that case, though the patent was more than six years old, the Court has granted interim injunction. In the present case, the patent is about 18 years old and hence there is no reason for this Court not to grant injunction in favour of the plaintiffs. 37. It is true that in the case of Garware-wall Ropes Ltd. (supra), this Court has not granted any injunction and confirmed the order passed by the learned Single Judge who has refused to grant injunction in favour of the plaintiff. However in that decision, one of the factors weighing with the Court was that the patent was new. Its validity was not established in the judicial proceedings. There were also serious controversies with regard to the validity of the patent earlier. However in that decision, one of the factors weighing with the Court was that the patent was new. Its validity was not established in the judicial proceedings. There were also serious controversies with regard to the validity of the patent earlier. The said matter was therefore decided by the Court on its own facts. 38. The decision of the Himachal Pradesh High Court in the case of Dhanpat Seth and Others (supra) would also not render any assistance to the defendants as in that case, the Court even after taking the view that mere grant of patent in favour of the plaintiffs by itself does not mean that plaintiffs were entitled to any injunction, the Court held that this factor can be taken into consideration and would be a relevant factor. In that case, the Court took the view that device developed by the plaintiffs was in fact the result of traditional knowledge and aggregation/duplication of known products. However in the present case, the plaintiffs prima-facie succeeded before the Court in establishing that the process invented by them is a new process and it is totally different from the conventional process adopted for manufacture of Phosphorus Pentachloride. 39. In view of the above discussions, the Court is of the view that all the instances cited and all the judgments relied on by the defendants are of no assistance to the defendants in opposing the plaintiff's prayer for grant of interim injunction. On the contrary, the documents produced before the Court, contentions raised, judgments relied and the plaintiff's pleadings and submissions are good enough to convince this Court for grant of interim injunction and accordingly the Court has granted the interim injunction in favour of the plaintiffs and against the defendants. 40. The Court therefore restrains the defendants by this Order from infringing the patent of the plaintiffs bearing no.172459 in any manner, either by manufacturing or offering for sale Phosphorus Pentachloride manufactured by applying the invention covered by the said Patent No.172459. The defendants are also directed to file in this Court, the Statement of Accounts right from the beginning till this date so far as the same is related to the manufacture of Phosphorus Pentachloride and profits derived there from by them, within one month from today. 41. The defendants are also directed to file in this Court, the Statement of Accounts right from the beginning till this date so far as the same is related to the manufacture of Phosphorus Pentachloride and profits derived there from by them, within one month from today. 41. It is clarified that the observations made by this Court in this Interim Order are of prima facie nature and the same would not be considered in any manner as final or conclusive. 42. Subject to the aforesaid directions and observations, this Interim Injunction, Application Exhibit 6 is accordingly disposed off. 43. On pronouncement of the judgment, Mr. Manav Mehta, the learned Advocate for the defendants has made a request to grant stay against the operation and implementation of this order for a period of four weeks. Ms. Sheth, the learned Advocate appearing for M/s. Singhi & Co. for the plaintiffs however objected to this request. Having regard to the facts and circumstances of the case and the fact that there was no injunction operating against the defendants, the request made by Mr. Mehta is acceded to and the operation and implementation of this order is stayed for a period of three weeks from today so as to enable the defendants to approach a higher forum, if the defendants so desire. Orders accordingly.