SNPC Machines Private Limited & Ors. v. Mr Vishal Choudhary

14. It is submittedby plaintiffs’counselthatthedefendant’smachinesold under thenameofPadmaBrick MakingMachinewas alsostyled as a mobile brick making machine having substantially the same features as that of plaintiff’s machine except that the brick making assembly was pulled by a tractor in defendant’s machine as opposed to having an integrated driver’s cabin. A comparative pictorial representation of both the products is as under: CS(COMM) 431/2023 8/59 Submissions of the plaintiffs

15. Plaintiffs’ counsel contended inter alia as under: a) Defendant lifted all theessentialelements of theplaintiffs’patentclaim; b) The differential claimed by defendant from plaintiff’s machine was trifling and insignificant in nature and did not impact the result in effect of the machine. In essence, ‘the pith and marrow of the invention’ has to be looked into and not literal infringement where each and every CS(COMM) 431/2023 9/59 component would be copied; c) Purposive construction ought to be applied rather than literal construction, in that, as longas the substanceofthe inventionwas found to be copied, non-essential or trifling variations were not germane; d) Doctrine of equivalents was to be applied to examine if the substituted element in theinfringingproduct does thesameworkin substantiallythe same way to accomplish substantially the same result. On this basis, reference was madeto thefollowingtabulationprovidedby defendant as part of their submissions, same is extracted as under: S.NO.

CLAIMS OF IN 359114 PADMA BRICK MAKING MACHINE [DEFENDANT’S MACHINE] 1 CLAIM 1: A mobile brick making machine comprising: A cabin for an operator of the machine to sit and operate the machine, the cabin having various controls for the operator to drive the machine and control brick making operation. In Padma brick makingmachine, no such cabin exits and brick making operation cannotbecontrolled from cabin.

2 A pair of steered front wheels and a pair of non- In Padma brickmakingmachine, the machine lacks a steering, and lacks CS(COMM) 431/2023 10/59 steered rear wheels mounted on the chassis through their respective axels, one pair of the front wheels and steered front wheels. 3 the pair of rear wheels driven by a movingmotor. It has only one set of wheels and these are not driven by a moving motor. e) It was contended thatthedifferentialaspectsclaimed by defendantwere trifling in nature, in that, firstly, no such cabin exist in the defendant’s machine; secondly, defendant’s machine lacked a steering and steered front wheels; and thirdly, it has one set of wheels and not driven by a movingmotor.Allthese, plaintiff’s counselcontended, merely amounted to difference of mounting the brick making assembly on a frame and causingthemechanismto work through a motorisedmobilesystem. This motorised mobile system was an integrated driver’s cabin resting on a chassis in plaintiffs’ machine as compared to a tractor-pulled chassis in the defendant’s machine. The process integrated the movement of the whole assembly to the functioning of the manufacturing mechanism leading to ejecting and laying of moulded bricks in an organised fashion on the ground. A simple comparison showed that plaintiffs’ and defendant’s machine were achieving the same result through a similar integration.

16. Counsel for plaintiffs, in support of their argument on balance of convenience, contended that it was clearly in their favour considering that CS(COMM) 431/2023 11/59 plaintiffs’ machinewas conceptualisedprior to 2014, patentapplicationwas filed in 2014 and was granted in 2020. The defendant admittedly had not started selling defendant’s machine 2021. As regards irreparable loss and injury, it was contended thatplaintiffs had heavily investedinto research and development and had now gathereda largepartofdomesticand international market.

17. In response to defendant’s submission challenging validity of the suit patent,plaintiffs’counselrelied on thepropositionthat such a challenge has to raisea serious triableand substantialquestion thatwould render thepatent vulnerable to challenge. Any such defence, if taken by defendant, would have to be seen at the stage of trial; at this stage of hearing an application under Order XXXIX Rule 1 & 2, CPC, the issue was, prima facie, only of balance of convenience and irreversible prejudice. In support, reliance was placed on decision in F.Hoffman-LA RocheLtd. & Anr. v. Cipla Ltd.:2009 SCC OnLine Del 1074, the relevant paragraphs of which are extracted as under: “69. Elaborateargumentswereaddressed on thequestion ofbalanceofconvenienceon theground thatthejudgment of the House of Lords in American Cyanamid requires such factor to be considered once it is shown that the damages would not provide an adequate remedy to the plaintiff in the event of it succeeding at the trial. In the considered view of this Court, this aspect need not be examined in the present case for more than one reason. First, theplaintiffs have, forthereasonsdiscussed earlier, failed to make outa prima facie case in their favour. Even if it is assumed that they have, in view of the fact that the defendanthasraised a credible challengethatrendersthe patent's validity vulnerable, the question of balance of convenience doesnot arise becauseclearly the Courtwill CS(COMM) 431/2023 12/59 not, at the interlocutory stage without the case going to trial, come to the aid of a holder of a patent of doubtful validity seeking to enforce such patent. …

71. The discussion on this aspect is concluded by concurring with the learned Single Judge that, assuming that the plaintiffs held a patent for the productwhich was the subject matter of the suit for infringement, the defendant has raised a credible challenge to the validity of the patent by raising a serious triable and substantial question that renders it vulnerable to challenge.”

18. Essential basis of defendant’s objection to validity of the suit patents is that automated brick making machines have been known to exist in the industry since many years and therefore, would be regarded as ‘prior art’. Illustration was given of the ‘Ishantu Brick Making Machine 800’; an automated brick laying machine existing prior to 2014, as well as ‘Osaka Rotary Logo Clay Brick Machine’, which was established in 2005, and a priorartpatent‘US 750059’titled ‘W.R.OberdahnBrick MakingMachine’ patented on 19th January, 1904.

19. In this regard, plaintiffs’ counsel contends that plaintiffs’ machine is not just about automated brick production or laying but the inventive step was the combination of mechanised brick production coupled with mobility and, in turn, the mobility triggering the mechanised process. There is no quarrel on behalf of the plaintiffs that automated brick machines are available, but the suit patent was relatable to the unique combination. Lack of Territorial Jurisdiction

20. To meet this argument, counsel for plaintiffs contended that, at this stage, it is necessaryfor plaintiffs to makea positivestatementthatinfringing CS(COMM) 431/2023 13/59 goods have found presence with the territorial jurisdiction of Delhi and the Court must proceed assuming the statements to be correct. For the same, he relied upon the following decisions, relevant paragraphs of which are extracted as under: i. Tej Ram Dharam PaulandOrs. Vs. Om Shiva ProductsInc and Ors., 2022 SCC OnLine Del 4745

ii. Marico Limited vs. Mukesh Kumar and Ors., 2018 SCC OnLine Del 13412

21. Plaintiffs haveprovided their sales turnoverfigures for years between 2014 to 2022 as under: Copy of the Chartered Accountant certificate has also been placed on record.

22. Plaintiffno.1 alsoclaims to haveinvested percentageofits turnoverin the marketing and promotion of its products and the said figures have been tabulated by the plaintiff as under: CS(COMM) 431/2023 15/59

23. Plaintiffs havealsoadvertedtoa successfulenforcementactionagainst the third party from using brick making machines. CS (COMM) 59/2022 titled as SNPC Machines Private Limited &Ors. v. Pankaj Rana & Ors., was instituted beforethis Courtanda decreewaspassed in favourofplaintiffs pursuant to a settlement between the parties. Defendant therein, undertook not to manufacture, sell and use the infringing brick making machine and admitted the intellectual property rights of the plaintiffs. Mapping

24. Before proceeding further, it would be useful to present a table mapping plaintiffs’ products vis-à-vis the defendant’s impugned brick making machine, as under: CS(COMM) 431/2023 16/59 CS(COMM) 431/2023 17/59 CS(COMM) 431/2023 18/59 CS(COMM) 431/2023 19/59

25. Plaintiffs havealsoprovided photographsoftheir brick layingmachine and display of the output as under: CS(COMM) 431/2023 20/59

26. Photographs of defendant’s impugned machine are as under: CS(COMM) 431/2023 21/59

27. As regards the first patent No.359114 of the plaintiffs, the following was the abstract adopted in the patent application: CS(COMM) 431/2023 22/59 In relation to patent no. 385845, the abstract adopted by the plaintiffs is as under: CS(COMM) 431/2023 23/59 CS(COMM) 431/2023 24/59 CS(COMM) 431/2023 25/59

28. Thesubsequentpatents 353483 and374814had further improvements on the original patents as noted above.

29. The claim in the first patent No.359114 adopted by the plaintiffs was as under: CS(COMM) 431/2023 26/59 CS(COMM) 431/2023 27/59 Submissions on behalf of the defendant

30. Aside from the written submissions of the defendant, the following points were argued: i. ThisCourtlacks territorial jurisdiction – Present issuewas pressed on the basis that defendant had no business in Delhi; that he resided in Haridwar and where he also had his sole proprietorship firm working for gain. Defendant claimed to have absolutely no business in Delhi and further denied having sold any product within the territorial jurisdiction of this Court. The solitary offer for sale to one Mr. Sumit Dhariwal cited by plaintiffs was supposedly a trap sale arranged by plaintiffs themselves; that said person was never the defendant’s customer. It was furtheraverred thatlistingon Indiamart websitecould not lead to a transaction merely provided information about defendant’s product. CS(COMM) 431/2023 28/59 ii. Failure to establish a prima facie case – It was contended thatneither balanceof convenience lied in favour of plaintiffs nor any irreparable injury since all aspects would be subject matter of trial, particularly since defendant has been conducting research work since 2002 and selling his machine from 2021. To this effect, counsel for defendant pointed out to YouTube videos which were uploaded by defendant since 2020. iii. Doctrine of equivalents not applicable: Counsel for defendant addressed theissueof equivalentsand non-applicabilitythereofin the following manner: a. Doctrine of Equivalents was not pleaded by plaintiffs; b. On theargument of demurrer, reliance was placed on LA Roche (supra), in turn on Biswanath Prasad Radhey Shyam v. Hindustan MetalIndustries, (1979)2 SCC 511, and in turn on Arnold v. Bradbury, (1871) 6 Ch A 706to contend that claims plus specifications have to be taken into consideration; c. Plaintiffs, in their submissions, only showed part of the claims while five other elements were ignored, claiming it as nonessential; d. Defendant submitsthatthecompositeclaim hastobeconsidered and is determinative; e. Kinetic energy is not used by plaintiffs’ machines but electrical energy is used – Defendant states that they used kinetic energy from the tractor; CS(COMM) 431/2023 29/59 f. Plaintiff is estopped from pleading equivalence on account of prosecutionhistoryon account thatthey cannot takea position, at this stage of suit for infringement, contrary to the position taken by them before Patent Officer; iv. Function-Way-Result Test (‘FWR test’): It was contended that, without prejudice, doctrine of equivalents for mechanical devices requires plaintiffs to satisfythetripletest i.e. FWR test. Essentially, it ought to be proved that the substituted claim element must perform substantially the same function in substantially the same way to achieve substantially thesameresult. In such a case, onus to provethe sameis on plaintiffs. However,it is contended thatin thepresentcase, plaintiffs have merely showed that it is substantially the same result for pleadinginfringement whereasnotonlythecabin is absentbutalso thechassis and controlofassembly from thecabin doesnotexist in the defendant’s machine. v. All elements rule: Defendantpleadsthe‘allelementsrule’ whereby the product must contain every element of claim of the suit patent and if even a singleelement is missingfrom theallegedly infringingproduct, it would not amountto infringement. Thisis thetraditionally followed test across jurisdictions. It was further contended that the doctrine of equivalents does not take away from the all elements rule. For this purpose, it was averred that a claim element expressly mentioned is presumed essential for the purpose of determining infringement even under doctrine of equivalents. Plaintiffs have alleged infringement of four different patentsin their plaint,however, failureto provideclaim mappingofsaid fourpatents wouldrendergivingup infringementplea CS(COMM) 431/2023 30/59 qua IN 385485and IN 374814 at thetime of institutionofthe present suit. vi. Contributory infringement: Defendant pleaded contributory infringement which is not in Indian statute; this is in context that the defendant was making a static machine and the farmer was using his tractor to make it mobile. Thus, arguendo, if there were any infringement, two parties were potentially infringing the patent. vii. Delay and laches: It was pointed out that plaintiffs sent a legal notice on 11th April, 2022; thereafter, there was a gap of almost 14 months before present suit was instituted. Plaintiffs had started their commercialproduction in theyear2021and wereawareofdefendant’s efforts in developing said brick making machine prior thereto. Thus, plaintiffscannotseek anyreliefin equity asthey allegedly manoeuvred provisionsoflaw i.e. institutionofpre-litigationmediationtomakeout an urgent case of interim relief. Rejoinder Submissions on behalf of plaintiff

31. Counsel for the plaintiffs presented the following submissions in rejoinder: a) On territorialjurisdictionit was contended thatit has to be based on a cumulative analysis of materials on record. The defendant issued a quotation letter to Mr. Dhariwal (for the plaintiffs) upon offer of a transaction. Defendant itself stated that they did so on the belief that Mr. Dhariwalwas carryingon businessin thenameof VJR Machines. It was, therefore, evident that defendant was carrying on business in CS(COMM) 431/2023 31/59 the territorial jurisdiction of this Court and intending to make a completecommercialtransaction. Further, thedefendant’slistings of the impugned machine were on Indiamart which is interactive in nature and consumer can initiate and conclude a commercial transaction on the website itself. b) The arguments of defendant that the doctrine of equivalents was not applicable, was vehemently refuted by plaintiff’s counsel. Reliance was placed onFMCCorporation & Ors. v. Natco PharmaLtd.(2022) SCC OnLine Del 4247. c) Defendant had only made minor changes in the machine which substantially performed the same function, in the same way, to yield the same result. These minor changes were mainly on the issue of mobility, where the defendant claimed he was selling a stationery machine and it is the user (farmer) which makes it mobile using the tractor. However, the defendant’s machine performed absolutely no function while it was stationery and also included wheels to ensure mobility. Reliancewas placed on defendant’sown demonstrationsto show thatthemachine was mobile. Secondly, it was claimed that the cabin, control from cabin and chassis was not part of the defendant’s impugned machine. However, what the defendant had effectively done was to replace the cabin, chassis and control with the tractor achieving exactly the same result by performing exactly the same function. As regards the chassis, the defendant’s impugned machine was obviously configured on base supporting various parts on aggregate of the machine. Defendant also does not claim lack of existence of the chassis (which is effectively a steel frame). Thirdly, defendant claimed that the timer was an electronic device which was CS(COMM) 431/2023 32/59 not correct. A timer in a brick laying machine is a mechanical device having a profile which enabled laying of bricks at specific intervals, which is the same feature as defendant’s impugned machine. Fourthly, the star shapedframewas effectively a spokeconfiguration which was also in thedefendant’smachine. Fifthly, that theplaintiffs’ machineused electric energy rather than kineticenergy as was used in defendant’s machine, was not a stand in the written statement. d) Defendant hadonlyvaguely mentionedthedifferences in thepleadings and were contrary to the videos uploaded by it. e) Defendant’sstandthatclaims in specifications should beread together and all theelements of the claim should be met, is untenable. Relying on patent jurisprudence, it was contended that the specification is supposed to enable a ‘person skilled in the art’ to replicate the invention once it comes into public domain, however, the claims are the basis of the protection. Reliance was placed on Novartis AG & Ors. v. Natco Pharma Limited, (2021)SCC OnLine Del 4849 of this Court to point out that claims have to be read as ordinary English sentences and patent assessment cannot be diluted or cut down by reference to rest of the specifications. f) Defendant had mis-read the specifications of the plaintiffs’ machine and constructive reading would show that it is through mobility that plaintiffs’ machine is able to make 100 bricks a minute. g) It was reiterated thatdoctrineofequivalentswas madeout in the case since the comparison of the different elements of both the machines was glaring. Moreover, the pith and marrow of the patent had to be seen for the purposesof patentinfringement. Reliance was placed on Sotefin SA v. Indraprastha Cancer Society & Research Center & CS(COMM) 431/2023 33/59 Ors., 2022 SCC OnLineDel516 and Rxprism Health SystemsPrivate Limited and another v Canva Pty Limited and Ors., 2023 SCC OnLine Del 4186. h) On estoppel advertingto prosecution history, plaintiffs’ counselstated that therewas no inconsistencywith whatwasstatedbeforethePatent Office and what was being claimed. i) It was submittedthat no counterclaim for revocation had been filed by thedefendant alsothedefendanthadfailed to siteanyprior artthatwas similar to plaintiff’smobilebrick makingmachine. Defendanthadnot filed any certified document from a financial expert or Chartered Accountant; theoriginalinvoices had notbeen puton record andeven the invoices filed by the defendant did not show a particular configuration of the brick laying machine. j) In any event, delay in takingaction is not sufficient to defeat grant of injunction and in that regard, an application under Section 12A, Commercial Courts Act, 2015 (“CC Act”) was also decided by this Court. Analysis Establishment of a prima facie case

32. As regards establishmentof prima facie caseof infringement, reliance has been placed on the following judgments, the relevant portions of which are extracted below for ease of reference: i. Sotefin SA v. Indraprastha Cancer Society & Research Center & Ors., 2022 SCC OnLine Del 516

CS(COMM) 431/2023 35/59 …

(c) The comparison between the plaintiff's product and the defendant's product can only lend support for the purposes of understanding of the technology and the features of the two products. However, the productv. productcomparison shallnotbe CS(COMM) 431/2023 39/59 determinative of infringement. It is the granted claims v. productcomparisonthat is determinative of patent infringement.” iii.FMC Corporation &Ors. V. Natco Pharma Ltd., 2022 SCC OnLine Del 4249 “24. Thedoctrineofequivalentsisapplicable where a product or process is not identical to the claim granted in a patent but its essential elements are sufficiently similar to the patented claim, so as to construe the product or process as infringing the patent.

25. In Clark v. Adie, [L.R.] 2 App. Cas. 315, the Houseof Lordsconsidered an appealwhere the plaintiff had claimed that horse clippers or horseclipping machinesbeing manufactured by the defendanthad violated a patentthat related to “improvement in apparatus for clipping or shearing horses”. The patented invention related to improvement in construction of the apparatus for clipping horses and for shearing and clipping of other animals. The patentee claimed that the use of the patented device had significantadvantagesin themeansofadjusting the cutter to a variety of positions. Several components of the defendant's machine were somewhat similar to those used in the patented device but certain other parts were not. The defendant claimed that there was no infringement, as various parts of clipping machine were already disclosed by the prior art. This wasapparentasthepatented invention was merely an improvement of known devices. Although the appeal preferred by the patentee CS(COMM) 431/2023 40/59 was dismissed, Lord Cairns, in his opinion,had referred to the test of ‘pith and marrow’ as relevant in cases where the infringer had not copied the entire instrument but had made colourablechanges. The relevant extract of the said decision referring to such kind of infringement is set out below:— “One mode of infringement would be a very simple and clear one; the infringer would take the whole instrument from beginning to end, and would produce a clipper made in every respect like the clipper described in the specifications. About an infringement of that kind no question could arise. The second mode would be one which might occasion more difficulty. Theinfringermightnottakethewhole of the instrument here described, but he might take a certain numberofparts of the instrument described, he might make an instrument which in many respects would resemble it in all its parts. And there the question which would be either for a jury or for any tribunal which was judging of the facts of the case, whether that which was done by the alleged infringer amounted to a colourable departure from the instrument patented, and whether in what he had done he had not really taken and adopted the substance of the instrumentpatented. And it might well be, that if the instrument patented consisted of twelve different steps, producing in the result the improved clipper, an infringer who took eight, or nine, or ten of these steps might be held by the tribunal judging of the patent to have taken in substance the pith and marrow of the invention, although there were one, two, three, four, or five steps which he CS(COMM) 431/2023 41/59 might not actually have taken and represented on his machine.”

26. In Beecham Group Ltd. v. Bristol Laboratories Ltd. (supra), Lord Diplock had referred to the decision in the case of Clark v. Adie (supra) and other decisions to explain the import of doctrine of equivalents. The relevant extract of the said decision is set out below: “Contemporaneously with the rise of the doctrine of infringing importation there was developing another doctrine known by the phrase adopted by Lord Cairns, L.C. in Clark v. Adie, [L.R.] 2 App. Cas. 315 as that of “pith and marrow”. It first arose in connection with mechanical patents for machinesor processes which madeuse of novel combinations of known mechanical principles. Regarded separately each element or integer in the machine or process might not be new; the novelty and accordinglytheinvention lay in the particular combination of them. When Clark v. Adie was in the Court of Appeal [L.R.]10 Ch. App. 667)James, L.J. was able to say:“In fact, every, or almost every, patent is a patent for anew combination”. The doctrine which, in the case of mechanical patentsto which it hasprincipallybeen applied, is also known as the doctrine of “equivalents”, which lucidly stated by Lord Parker, then Parker, J., in Marconiv. British Radio Telegraph and Telephone Co. Ltd., (1911) 28 R.P.C. 181at217, wherehesaid:“Where… the combination or process, besides being itself new, produces new and useful results, everyone CS(COMM) 431/2023 42/59 who produces the same results by using the essential parts of the combination orprocess is an infringer, even though hehas, in fact, altered the combination or process by omitting some unessential part or step and substituting another part or step which is equivalent to the part or step that he has omitted.” The increasing particularity with which the claims are drafted and multiplied in modern specifications may have reduced the scope of application of the doctrine of pith and marrow, but I am unable to accept the argument advanced by Bristol that this has made the doctrine obsolete. It still remains a part of patent law as is acknowledged in speeches delivered in this House as recently as C. Van der Lely N.V. v. Bamfords Ltd., [1963] R.P.C. 61: Rodi &Weinenberger A.G. v. Henry Showell Ltd., [1969] R.P.C. 367. Directed as it is againstcolourableevasion ofa patentitisnot in my view confined to mechanicalinventionsor to claims for new combinations of integers, but in appropriate cases, though they may be rare, is applicable to claims for new products.”

27. In Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 US 605 (1950), the Supreme Court of the United States applied the doctrine of equivalents. The following passagesfrom the said judgment, delivered by Justice Jackson, that explain the said doctrine and its applicability, are relevant: “4. But courts have also recognized that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grantinto a CS(COMM) 431/2023 43/59 hollow and useless thing. Such a limitation would leave room for—indeed encourage—the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law. One who seeks to pirate an invention, like one who seeks to pirate a copyrighted bookor play, may be expected to introduce minor variations to conceal and shelter the piracy. Outright and forthright duplication is a dull and very rare type ofinfringement. To prohibitno otherwould placethe inventorat themercy ofverbalism and would be subordinating substance to form. It would deprivehim ofthe benefit of hisinvention and would foster concealment rather than disclosure of inventions, which is one of the primary purposes of the patent system.

5. The doctrine of equivalents evolved in response to this experience. The essence of the doctrine is thatone maynot practice a fraud on a patent. Originating almost a century ago in the case of Winansv. Denmead, 15 How. 330, 14 L.Ed. 717, it has been consistently applied by this Court and the lower federal courts, and continuestodayreadyand available for utilization when the proper circumstances for its application arise. ‘To temper unsparing logic and prevent an infringer from stealing the benefit of the invention'1 a patenteemay invoke this doctrine to proceed againsttheproducerof a device ‘if it performs substantially the same function in substantiallythe same wayto obtain the same result.’ Sanitary Refrigerator Co. v. Winters, 280 US 30 (1929), 42, 50 S.Ct. CS(COMM) 431/2023 44/59 9, 13, 74 L.Ed. 147. The theory on which it is founded isthat ‘if two devices do the same work in substantially the same way, and accomplish substantiallythe same result, they are the same, even though they differ in name, form or shape.’Union Paper-Bag Machine Co. v. Murphy, 97 US 120(1877), 125,24 L.Ed.

935. The doctrine operates not only in favor of the patentee of a pioneer or primary invention, but also for the patentee of a secondary invention consisting of a combination of old ingredients which produce new and useful results, Imhaeuser v. Buerk, 101 US 647 (1879), 655, 25 L.Ed. 945,although thearea of equivalence may vary under the circumstances. See Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 US 405, 414-415, 28 S.Ct. 748, 749, 52 L.Ed. 1122, and cases cited; Seymourv. Osborne, 11 Wall. 516, 556, 20 L.Ed. 33; Gould v. Rees, 15 Wall. 187, 192, 21 L.Ed.39. Thewholesomerealism ofthis doctrine is not always applied in favor of a patentee but is sometimes used against him. Thus, where a device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the doctrine of equivalents may be used to restrict the claim and defeat the patentee's action for infringement. Westinghousev. Boyden Power Brake Co., 170 US 537 (1898), 568, 18 S.Ct. 707, 722, 42 L.Ed. 1136. In its early development, the doctrine was usually applied in cases involving devices where there was equivalence in mechanical components. CS(COMM) 431/2023 45/59 Subsequently, however, the same principles were also applied to compositions, where there was equivalence between chemical ingredients. Today the doctrine is applied to mechanical or chemical equivalents in compositions or devices. See discussions and cases collected in

60.

6. What constitutes equivalency must be determined againstthecontext of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula and is notan absolute to be considered in a vacuum. It does not require complete identity for every purposeand in every respect. In determining equivalents, thingsequalto the samething may notbe equal to each other and, by the same token, thingsfor most purposes different may sometimes be equivalents. Consideration mustbe given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.

7. A finding ofequivalenceis a determination offact. Proofcan bemadein anyform: through testimony of experts or others versed in the technology; by documents, including texts and treatises; and, of course, by the disclosures of the prior art. Like any other issue of fact, final CS(COMM) 431/2023 46/59 determination requires a balancing of credibility, persuasiveness and weight of evidence. It is to be decided by the trial court and that court's decision, under general principles of appellate review, should not be disturbed unlessclearly erroneous. Particularly is this so in a field where so much dependsupon familiarity with specific scientific problemsand principles not usually contained in the general storehouse of knowledge and experience.”

28. In Warner-Jenkinson Co., INC v. Hilton DavisChemicalCo. (supra), theSupremeCourt of the United States expressed the concern that the doctrine of equivalents, as it had cometo be applied since the decision of Graver Tank & Mfg. Co. v. LindeAir ProductsCo. (supra), has “taken on a life of its own unboundedbypatent claims”. The Court also observed that the doctrine of equivalents when applied broadly “conflicts with the definitional and publicnotice functions of the statutory claiming requirement.”

29. The Court also observed that in a case where an invention is expressed as a combination of elements, the doctrine of equivalents would refer to equivalency of each element or part of the invention, which is substituted in the allegedly infringing product or process. The relevant extract from the judgment reads as under: “…..Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a CS(COMM) 431/2023 47/59 whole. It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety……”

30. The Court also discussed whether equivalents are required to be determined by applying the triple test - the function served by a particular element; the manner in which the function is performed; and the results obtained by the element - or by applying the test whether the differences are substantial. In this context, the Court observed as under: “All that remains is to address the debate regarding thelinguisticframeworkunderwhich “equivalence” is determined. Both the parties and the Federal Circuit spend considerable time arguing whether the so-called “triple identity” test— focusing on the function served by a particular claim element, the way that element serves thatfunction, and the result thus obtained by that element—is a suitable method for determining equivalence, or whether an “insubstantial differences” approach is better. There seems to be substantial agreement that, while the triple identity test may be suitable for analyzing mechanicaldevices, it often provides a poor framework for analyzing other products or processes. On the other hand, the insubstantial differences test offers little additional guidance as to what might render any given difference “insubstantial.” In our view, the particular linguistic framework used is less important than whether the test is probative of the essential inquiry: CS(COMM) 431/2023 48/59 Does the accused product or process contain elements identicalorequivalentto each claimed element of the patented invention? Different linguistic frameworks may be more suitable to different cases, depending on their particular facts. A focus on individual elements and a special vigilance against allowing the concept of equivalenceto eliminate completely any such elements should reduce considerably the imprecision of whatever language is used. An analysis of the role played by each element in the context of the specific patentclaim will thus inform the inquiry as to whether a substitute element matchesthe function, way, and resultof the claimed element, or whether the substitute element plays a role substantiallydifferent from the claimed element.”

31. The doctrine of equivalents has been accepted in the jurisprudence to protect patent rights from being infringed by infringers using colourable method of making some minor, insubstantial variations to escape the reach of the patent. The doctrine of equivalents, in essence, seeks to address infringers who introduce minor variations as subterfuge to defeat patent rights. The doctrine is applied to ascertain whether there is an infringement by excluding any insubstantial, minor or trivial changes that are designed to deprive the patentee of the benefits of his invention.

32. The doctrine of equivalents is applicable only in cases where the variation or difference between theproductorprocessand thepatented claim is insignificant, insubstantial and not essential to the patented claim. In order to CS(COMM) 431/2023 49/59 determine whether, on the basis of doctrine of equivalents, a product or process infringes the patent, it is essential to determine the essence and scope of the patent. It is important to understand as to what is the invention that is patented. If the invention is infringed by a productor process, the minordifferences in the non-essential trappings of the product or process would be irrelevant.

33. This Court is unable to accept the contention that the doctrine of equivalents is onlyrelevant in case of a productpatentandnot a process patent. If an innovation -whether it is a productor a process - is pirated, an action to prevent such infringementcannotfail solely for the reason that the offending product or the process has certain minor and insubstantial variations or differences as compared to the patent.

34. The triple test - substantially the same function, in substantially the same way and to yield the same result - is applied primarily to products or devices. A device which substantially performs the same function, in substantially the same way, and accomplishes the same result, may infringe the patent rights. However, when it comes to a process or a method, this test may require to be suitably adapted. In a case where a method ofachieving a result is the essence of the patent, achieving substantially the same result would clearly not be relevant. The method with which the result is obtained would be material to determining whether the patent has been infringed. The test of substantialidentity ofthe competing methods CS(COMM) 431/2023 50/59 must necessarily be viewed by identifying the essential elements and steps of the said process and then examining themannerin which thekey elements interact in each essential step that the process/method entails to yield the given result. The essential elements of the given process; the necessary steps ofthat process; and the manner in which the essential elements interact at each step must be substantially similar to the patented process or method to sustain a claim ofinfringement. Thevariationsin thecompeting methods require to be compared to ascertain whether they are minor/trifling and inessential and have been introduced only to camouflage piracy.

33. The three decisions of this Court cited by plaintiffs and defendant, of which relevant extracts have been reproduced above, are Sotefin (supra) a decision of Single Judge of this Court ofFebruary, 2022, FMC Corporation (supra) a decision of Division Bench of December, 2022 and RxPrism (supra) a decision of Single Judge of July, 2023. All these decisions have extensively relied upon earlier decisions of the Indian Courts as well as Courts of foreign jurisdictions. Our analysis is contoured on the test which needs to be used for assessing a prima facie infringement of the suit patent. The following principles can be culled out collectively from the aforenoted decisions, since all of them rely upon the same previous sources while articulating them from different perspectives: A) Infringement is to be adjudged objectively and defendant’s intention may not be materialto determinethis question; theemphasis however has to be on mapping of ‘essential elements’. CS(COMM) 431/2023 51/59 B) Whether elements which are missing in the defendant’s products are so essentialor substantialthattheabsencewouldentitletheplaintiffto an injunction. C) Patent infringement analysis, comparison of elements of the suit patent’sclaims is tobedonewiththeelements/claims oftheinfringing products. D) Therecan be a case of non-literalinfringement whereeach and every component of patent specification is not found in the infringing productsi.e. all elements of a claim may not entirely correspond with the infringing product, but it still can be a case of infringement. E) It is the pith and marrow of the invention claimed that is required to be looked into. This testhad been referred to in Clark v. Adie, [LR] 2 App Cas 315 [House of Lords]. F) Non-essential or trifling variations or additions in the product would not be germane, so long as substance of the invention is found to be copied. G)Pure literal construction is not to be adopted, rather doctrine of purposive construction should be applied. H)Doctrine of equivalents is to be examined and applied if the substituted element in the infringing product does the same work, in substantially the same way, to accomplish substantially the same result. The source of this doctrine traces its origin to an old decision in Winans v. Denmead, 15 How. 330, 14 L.Ed. 717 which was cited with approval in Graver Tank and Manufacturing Co. v. Linde Air ProductsCo., 339 US 605 (1950)(SupremeCourt of United States). I) The essential feature in an infringing article or process are of no account. Iftheinfringinggoodsaremadewiththesameobject in view, CS(COMM) 431/2023 52/59 which is attained by thepatentedproduct, then a minor variation does not mean thatthereis no piracy. Sometriflingor unessentialvariation has to be ignored. This principle was cited by the Division Bench of this Courtin Raj Prakash v. Mangat Ram, ILR (1977) 2 DEL 412. J) Whileproduct versusproduct comparisonshallnot tobedeterminative of infringement as opposed to the granted claim versus product comparison, an essential comparison between the products of the plaintiffs and the defendants may be necessary. K)The triple identity test is important - focusing on function, way the elements serve the function and the result obtained is suitable for analyzing mechanical device (cited in Warner-Jenkinson Co. Inc. v. Hilton Davis Chemical Co., 520 US 17 (1997) (Supreme Court of United States).

34. It is quite evident from these assessments that the ‘all elements rule’ has sinceto be used in a qualified manner. On an overallforensic assessment of these principles, it is quite clear that the doctrine of equivalents is alive and applicable and inclusive of the triple identity test. The essence of the doctrine is that one may not practice a fraud on the patent and an infringer should not be able to get away by merely arguingthat someelements of the plaintiff'sproductsarenot presentin that ofthedefendant. Ifso accepted, it would be very easy for any infringer to deploy minorvariations in a product which employs multifarious elements andarguethatit does not infringe, even though it performs thesamefunctionin substantiallythesameway to obtain the same result.

35. In this regard it has to be seen that the primary objective and mission CS(COMM) 431/2023 53/59 of the infringer is to produce a product which competes with product of the plaintiffin themarket, therefore, theFWR or thetripleidentitytest becomes so critical. Ultimately, in patentsjurisprudence, theessentialidea ofapplying for a patentandbeinggranted sois thecommercialexploitationofthepatent. If a patentee’s product is ambushed by an infringer’s product albeit with minor variation(s), it defeats the very purpose of the patent. Therefore, the pith and marrow test ought to be used alongside the triple identity test in establishing a possible infringement. In this regard the following statement from Graver Tank (supra)stands out: “outrightand forthrightduplicationis a dull and very rare type of infringement. To prohibit no other would place the inventorat the mercy of verbalism and would besubordinatingsubstance to form; it would deprive him of the benefit of invention and would foster concealmentrather than disclosure of invention, which is oneof the primary purposes of patent system”.

36. Essentially on an analysis of the precedents in this regard, it clearly seems that various aspects which need to be considered for potentially infringing patent claims are: a) Claims have to be construed in a particular manner and not merely literal; b) Trivial variations may not itself be relevant; c) Assessment has to be made whether alleged infringing product is producing the same equivalent effect as that of suit patent; d) A product versus product comparison cannot be determinative of infringement but of claims versus product comparison; e) The pith and marrow of invention is to be looked at; f) Detailed specification and analysis may not be necessary; CS(COMM) 431/2023 54/59 g) It has to be seen whether the infringing product does the same work, in substantially the same way, to accomplish substantially the same result.

37. From the claims it is apparent that the patents in question have the following relevant features: a) It was a mobile brick making machine; b) It comprised of a chassis to support various parts and aggregates of the machine; c) It hasa cabin foroperatorto sit and operate themachineand controls; d) It has pair of steered front wheels and non-steered rear wheels mounted on the chassis; e) It has a raw material stock compartment to hold the raw material for making bricks; f) It has roller and die-assembly comprising of roller wheel and a die made of a plurality of circumferentially arranged brick frames; g) The roller and die assembly is configured to rotate as the machine moves ahead; h) Themotion ofthemachinewith pluralityofcircumferentiallyarranged brick frames receives the raw material, mould thebricks and lay them on the ground in an organized line of bricks.

38. From what has been stated by the defendant and is evident from the photographs of the defendant’s machine, is that it was also a mobile brick laying machine with a raw material stock compartment, roller and dieassembly and aplurality of circumferentially arranged brick frames fixed on theroller wheel which would perform thesamefunctionofreceivingtheraw CS(COMM) 431/2023 55/59 material, mouldingthebricksandlayingthem on groundin an organized line of bricks. This whole assembly was admittedly mounted on a frame with a pair ofwheels. This aggregateofmachine was puton to a tractorby theuser and by usingthekinetic energy of the movement, theassembly operated and lay bricks on the ground.

39. The issues on which defendant claimed difference was: a) Lack of a cabin which was integrated to the assembly and used as an operating and controlling place; b) No steering; c) No steered front wheels; d) Rear wheels not driven by motor.

40. At first blush, it would seem that these are differences which would secure the defendant from an infringement action; however, if one looks closely at the differences cited, all thefour differences arereally partsofthe same fundamental issue, i.e., the mobility and the mechanism to ensure mobility of the assembly. The plaintiffs’ invention had an integrated cabin which would make the assembly mobile whereas defendant’s machine required to behooked up to a tractor or anymobilevehicle. Allaspectssuch as cabin, steering, steered front wheels and the operation of the rare wheels was all completely relatable to the issue of mobility of the assembly.

41. For appreciatingthedispute, it is importantto assessas to what really is the inventionand pithand marrow ofthe invention. Thepithand marrow of the invention is really the assembly which ensures brick making through mobility. It is not thedefendant’s casethatthebrick makingmachine was a stationery brick makingmachineand did not requiremobilityat all. In fact, CS(COMM) 431/2023 56/59 the defendant’s machine necessarily required to be hooked up to a mobile automativevehicle in order to ensureits operation. Thefundamentalaspect of these machines was of ensuring that the system of brick making was integrated on to oneframe /chassis right from thehopper containingtheraw material for bricks to the feeder into the roller and die assembly and then through thecircumferential motiontheejectment ofthemoulded brickon the ground. Without mobility defendant’s machine would serve no purpose considering it had a roller and die mechanism as well.

42. All elements of thehopper,feeder, roller and dieassembly, mould and ejectment were similar in both the plaintiffs’ and the defendant’s machine. Theonly differencewas thatthedefendanthadsevered theaspect ofmobility and left it to the user for using their own automative vehicle whereas the plaintiffs had integrated the mobility with the machine itself.

43. The innovativenesswas clearly in ensuringcontinuousbrick layingin an organisedsequenceover an expanseof a field or a road. This could only be done with mobility of a brick laying assembly. Therefore, the assertion that there were fundamental changes in the defendant’s machine would possibly not be correct and difficult to countenance.

44. Reliance of the defendant on ‘all elements rule’ would therefore, not be correct, at least for the purposes of interim injunction and establishment of a prima facie case by the plaintiffs. The all-elements rule cannot be adopted to the exclusion of the pith and marrow rule. Here, as we have observed, thattheessentialpartofthepatent wasbrickmakingassembly, the variation between plaintiffs’ product and defendant’s product, was not essential as long as mobility was provided to the brick laying assembly. CS(COMM) 431/2023 57/59 Moreover, using the triple test of ‘Function-Way-Result’ it would further buttress the claim of the plaintiff in that the substituted element performed substantially the same function in substantially the same way to achieve substantially the same result.

45. On theissueofterritorialjurisdiction, this Courtis oftheopinion that the objection of the defendant is not made out, particularly at this stage when the trial is still to progress. The plaintiff has placed evidence of the defendant attempting to conclude a transaction in Delhi and that the said defendant’s machine was available for sale in the jurisdiction of this Court. The objection of the defendant that it was a trap purchase and it was approached by a decoy client of the plaintiffs, will not take away from the fact that quotation letter dated 3rd April, 2023wasreceived with pricelistings. Moreover,theplaintiffs havealsofiled brochureposted bythedefendant that they were involved with the manufacturing and selling of the machines and listings on Indiamart where defendant’s business was also listed and was accessible in Delhi. It would be difficult at this stage, without further evidence being led, that the defendant had not purposely availed of the jurisdiction in Delhi for concluding a sale.

46. On the issue of estoppel, reference has been made to the response to the examination report dated 7th January, 2020 on the patent application No.543/DEL/2014, in referent to the prior arts D1-D[3] which has been cited by theexaminer. In its response, thefocus oftheplaintiffs is on themobility ofthebrick makingmachineandintegration intoa mobilevehicleofthebrick laying assembly. The plaintiffs have not pleaded anything different before this Court to be estopped from doing so. Plaintiffs’ claim here, in order to CS(COMM) 431/2023 58/59 establish a prima facie case, is based on the doctrine of equivalents and in particular the patent substance test.

47. As regards delay and laches, it may not been an issue in the present case. It is noted that plaintiff came to know about defendant’s allegedly infringing activities for the first time in April, 2022, pursuant to issuance of the Cease & Desist letter by plaintiffs to the defendant on 11th April, 2022, no reply was received. In this light, plaintiff conducted a market survey whereafter,no allegedly infringingmachines werefoundby them. Only after the plaintiff’s client was approached by the defendant in April, 2023did the plaintiffs approach this Court.

48. In this regard, it was stated that the cause of action arose in the first week ofApril2023whenplaintiffs’ clientswereapproachedbythe defendant for supplying his impugned brick making machines. Cause of action to institutethepresent suitfirst arosein Apri[1], 2022 whentheplaintiffs became aware of the fact that the Defendant is manufacturing and selling the impugned brick makingmachines. Causeofactionfurther aroseon 11th April, 2022 when the plaintiffs issued a Cease & Desist letter to defendant.

49. Contention of the defendant regarding Section 12A, CC Act has already been decided in disposalof I.A. 11495/2023 moved byplaintiffs vide order of this dated 3rd July, 2023.

50. As regards the reference to the Angora Cat Principle cited with approval in European Central Bank v. Documents Security Systems Incorporated [2008]EWCA Civ 192 (SupremeCourtof England), decision dated 19th March, 2008to contend that thepatenteein defence, i.e., its patent CS(COMM) 431/2023 59/59 to argue infringement states that its patent is expansive. However, this principlemay nothaveimmediaterelevanceconsideringit was metaphorical formulationpersuadingthat infringementandvalidity casesoughtto betried together. Thisargument wasmadein thecontextofconventionalprosecution historyestoppelby defendant’scounselto contend thatplaintiffs, in response to examiner’s report, contended that only roller and die assembly matters whereas now the integrated mobility is also being argued.

51. In view of theforegoing, this Courtfinds thatplaintiffs havemadeout a prima facie case of infringement. Balanceof conveniencelies in favour of the plaintiffs and irreparable injury would be caused if the injunction, as prayed for, is not granted. Accordingly, an interim injunction during the pendency of present suit is granted in favour of plaintiffs and against the defendant in the following terms:

52. Application is allowed and disposed of in the above terms.

53. Judgment be uploaded on the website of this Court.

ANISH DAYAL JUDGE MARCH 05, 2024/sm/sc