ECOMAX SOLUTIONS PVT. LTD. v. ENERGEO BUILDING SOLUTIONS LLP & ORS.

4. Case of the plaintiff 4.[1] Mr. Aniruddha Valsangkar, appearing for the plaintiff, submitted that the plaintiff is aggrieved both by the misuse, by the defendants, of information which was confidential to the plaintiff and of piracy, by the defendant, of the plaintiff‟s registered suit patent. 4.[2] Mr. Valsangkar charts the following chronology of events, in an attempt to drive home his allegation of misuse of confidentiality:

(i) On 13th April 2012, Mohan Chavan, Chief Executive

(ii) On 4th August 2017, Eco Green Systems LLP

(“Ecogreen”), the predecessor-in-title of the plaintiff executed a Confidentiality Agreement with Carrier. At that time, Defendant 3 Vanshaj Dhawan (“Vanshaj”, hereinafter) and Defendant 4 Ashish Dangaych were employed with Carrier. The relevant Clauses of the Confidentiality Agreement read thus: “The Parties will or already have had discussions and exchanged information, and may intend to continue having discussions and exchanging information, in connection with a possible business co-operation between them. All such discussions referred to the above hereafter will be called the “Discussions”. During and in connection with the Discussions, each Party may have need of information from the other party that is regarded as Confidential. Accordingly, the Parties agree as follows:

1. “Confidential Information.” is defined as any information that is disclosed in connection with the Discussions and is furnished by a Party to the other Party in one or more of the following forms:

3. “Non-Disclosure, Non-Circumvention.” The receiving Party shall, for a period beginning with the first date of receipt of each respective disclosure, and continuing for a period of thirty-six (36) months thereafter use reasonable care to maintain the confidentiality of all Confidential Information and shall limit disclosure to such of its directors, employees, agents, advisors, affiliates or subsidiaries as have a “Need to Know” such Confidential Information in order that the objectives of the discussions can be achieved. The receiving Party shall be responsible for the compliance by such directors, employees, agents, advisors, affiliates, or subsidiaries with the provisions of this Agreement. Additionally, the Parties by entering into this Agreement shall not knowingly cause nor instigate a cause to circumvent the other at any time during the respective thirty-six (36) month period of which the Confidential Agreement is designated as effective and agreed to between the parties. “Reasonable Care” shall mean the same degree of care exercised by the receiving Party with respect to its own information of the same nature as Confidential Information.

4. “Exceptions to Confidentiality Obligations.” The Confidentiality and Limited Use Obligations of this Agreement will not apply to information received pursuant to this Agreement which: a. Is or becomes publicly known other than through a breach of this Agreement by the receiving Party; or b. Is already known to the receiving Party at the time of disclosure as evidenced by the receiving Party‟s written documentation; or c. Is lawfully received by the receiving Party from a third party without breach of this Agreement or breach of any other agreement between the disclosing Party and such third party; or d. Is independently developed by employees of the receiving Party who have not had access to or received any Confidential Information under this Agreement; or e. Is furnished to a third party by the disclosing Party without restriction on the third party‟s right to disclose; or f. Is authorized in writing by the disclosing Party to be released from the confidentiality, nondisclosure, non-circumvention obligations herein. Specific information shall not be deemed to be within the foregoing exceptions merely because it is included within general information which is within the exceptions, nor will a combination of features be deemed to be within such exceptions merely because the individual features of the combination are separately included within such exceptions. The Party relying on any of the foregoing exceptions to the confidentiality obligations herein shall bear the burden of proving applicability of the exception.”

(iii) On 15th March 2019, Vanshaj, on behalf of Carrier, wrote to the plaintiff, seeking the prices of its ATCS, which were provided by Mohan Chavan, writing for the plaintiff, on the same day.

(iv) On 28th August 2019, Vanshaj formed the Defendant 1limited liability partnership EnerGeo Building Solutions LLP (“Energeo LLP”) with Sunanda Dhawan, even while he continued to remain employed with Carrier.

(v) On 10th September 2019, at 9.05 a.m., Vanshaj, on behalf of Carrier, wrote to the plaintiff, seeking the drawings of the Ball Collector and Ball Trap of the ATCS for submission to a customer. Mohan Chavan immediately wrote, at 9.19 a.m., to Vinay, an employee of the plaintiff, to share the said details. Vinay, thereupon, enclosed, with e-mail sent to Vanshaj at 1.36 p.m. on the same day, the drawings of the Ball Collector and Ball Trap.

(vi) In October 2019 itself, Vanshaj resigned from Carrier.

(vii) On 15th October 2019, Defendant 1 Energeo LLP filed

(viii) In February 2020, Defendant 4 resigned from Carrier.

(ix) On 12th March 2020, Defendant 2 was incorporated.

(x) On 1st September 2020, at 1.37 p.m., Voltas addressed an e-mail to the plaintiff, seeking its best offer, to which Energeo LLP, through its employee Zaheer Ahmed, responded at 3.32 p.m., enclosing the offer for the AFCS of Energeo LLP, for use in the Central Vista Project. A copy of the e-mail was addressed to the plaintiff. The plaintiff contends that it was from this e-mail that it came to know, for the first time, of the AFCS of Defendant 1. Attached to the e-mail was the brochure of Energeo LLP, which claimed to be “introducing Anti- Fouling Condenser System (AFCS).” According to Mr Valsangkar, the AFCS of the defendants had been created by misusing the confidential information of the plaintiff, and also infringed the suit patent.

(xi) On 18th November 2021, the suit patent was registered by the IPO, with effect from 13th April 2012, in view of Section 45(1)1 of the Patents Act.

45. Date of patent – (1) Subject to the other provisions contained in this Act, every patent shall be dated as of the date on which the application for patent was filed.

(xii) On 10th May 2022, Voltas addressed an e-mail to

Vanshaj, enclosing the drawings of the plaintiff. This, submits Mr Valsangkar, breached Memorandum of Understanding (MoU) dated 27th February 2018 between Ecogreen (the plaintiff‟s predecessor-in-title) and Voltas, Clause 5 of which required Voltas to maintain confidentiality with respect to confidential information provided to it by Ecogreen. 4.[3] Thus, submits Mr Valsangkar, confidential information, which was shared by the plaintiff with Defendants 3 (Vanshaj) and 4 was misused by the said defendants, to fabricate and create their own tube cleaning system, which they called the Anti Fouling Condenser System (AFCS). Mr. Valsangkar submits that the sharing of the confidential information by Voltas with Vanshaj was in breach of the Confidentiality Clause in the MoU dated 27th February 2018 between Voltas and Ecogreen. He however, acknowledges the fact that the default in this regard, if any, would lie at the door of Voltas. Mr. Valsangkar, however, seeks to emphasise on the aforesaid e-mail correspondence merely to point out that, shortly prior to AFCS being devised by Defendants 3 and 4, the said defendants had come into possession of confidential information of the plaintiff, which would facilitate fabrication of the AFCS. 4.[4] The misuse of the confidential information which had thus come into possession of the defendants has, Mr Valsangkar submits, to be gleaned from their conduct. Having, by purporting to require them for forwarding to a prospective customer, come into possession of the confidential drawings of the appellant‟s Ball Trap on 10th September 2019 when he was still an employee of Carrier, Defendant 3 proceeded to resign from Carrier in October 2019 itself and, on 15th October 2019, himself apply, on behalf of Energeo LLC, for grant of design for the Ball Trap. It is obvious, submits Mr Valsangkar, that the defendants have made use of the drawings procured by them on 10th September 2019. He draws attention to the report of the Local Commissioner, appointed by this Court in the present case, which noted the presence of the plaintiff‟s confidential drawings in the defendants‟ premises. Why, queries Mr Valsangkar, would the plaintiff‟s confidential drawings be present in the defendants‟ premises, unless the defendants were making use of them? 4.[5] The need to maintain confidentiality of material provided by one party to the other, submits Mr Valsangkar, is not dependent on the existence, or non-existence, of any contractual stipulation between them to that effect, for which purpose he relies on the decision of the Court of Appeal in Saltman Engineering Co. v. Campbell Engineering Co.[2] and Seager v. Copydex Ltd[3]. He also cites, in this context, para 16, 18, 19 and 25 to 32 of the decision of a Division Bench of the High Court of Calcutta in Sudipta Banerjee v. L.S. Davar & Co.[4] and paras 2 and 9 to 11 of the decision of a Division Bench of the High Court of Bombay in Zee Telefilms Ltd v. Sundial Communications Pvt Ltd[5]. 4.[6] Mr Valsangkar further submits that the AFCS infringed the suit patent, as all essential elements of the suit patent were replicated in the AFCS. This, he submits, would become clear on a comparison of the brochure of the defendant‟s AFCS with the suit patent relating to the (1948) 65 RPC 203 (1967) 1 WLR 923 AIROnLine 2022 Cal 730 2003 (3) Mh LJ 695 plaintiff‟s ATCS. One may, therefore, at this point itself, reproduce the drawing of the plaintiff‟s ATCS, as contained in the complete specifications of the suit patent, and the drawing of the defendant‟s AFCS: Drawing of plaintiff‟s ATCS as contained in IN‟118 Drawing of defendants‟ AFCS as contained in its brochure 4.[7] Mr Valsangkar has taken me through paras 37, 38, 40, 41, 42 and 49 of the defendants‟ reply to the present application, which may, therefore, be reproduced thus:

49. The Defendants submit the following in view of the above case and allegation of Plaintiff in relation to Plaintiff‟s confidential information, i. The Defendants submit and undertake that they have never used and will not use any alleged confidential information of the Plaintiff in any manner. ***** iv. Further, since the allegedly infringing product of the Defendants is significantly, materially, and completely different from the alleged invention of IN ‟118 as demonstrated in the preceding paragraphs, there is no occasion or need for the Defendants to rely on any drawings or other confidential information of the Plaintiff. It is logical that if two technologies are different then their technical know-how, confidential drawings, photographs and confidential working principles or other confidential information will be materially different as well. v. As demonstrated above, the alleged invention of IN ‟118 overcomes certain alleged “operational drawbacks” over existing technology. As also demonstrated above, the Defendants are using technology which is not part of the impugned patent and thus there is no occasion or requirement for the Defendants to even rely or use the alleged confidential information of the Plaintiff. Without prejudice, it is submitted that merely based on ball trap and ball collector drawings as purportedly shared with Defendant No. 3, it is not possible to manufacture the said parts or the entire equipment/product. Further, the software controlling any AFCS product is securely protected and cannot be accessed by any party without breaking into the code/knowing the password or without authorised access. It is not the case of the Plaintiff that they have shared any details which can enable constructing the AFCS system with Carrier or with any of the Defendants. Therefore, on basis of general drawings alone and without knowing or understanding complex code and program logic, it is not possible to construct such complex systems. vi. Simply because Defendants happen to be aware of Plaintiff‟s confidential information and operate in the same field does not by itself mean that they will be using such information. In this context, it is irrelevant if the broad customer bases are common, or the broad field of technology is common since the actual technology used is completely different.” Apropos the assertions in these passages, Mr. Valsangkar submits that the distinctions that they seek to draw between the AFCS and the ATCS are inconsequential, and that all essential features of the ATCS are present in the AFCS. He submits that Defendants 3 and 4 had no engineering background, or experience in fabricating tube cleaning systems whatsoever, and that, therefore, it could not be believed that they had, by their own inventive faculties, created the AFCS from scratch. Mr. Valsangkar submits that the only distinction that the defendants seek to draw, between their AFCS and the plaintiff‟s ATCS, is the presence of two pumps in the ATCS as against one in the AFCS and the absence, in the AFCS, of a ball counting system. Adverting to para 40 of the defendants‟ reply, Mr. Valsangkar submits that the number of ball collectors was relevant only for Claim 1 in the suit patent, and not for Claim 9, which claimed a cleaning system with two compartments. Similarly, submits Mr. Valsangkar, the distinction between the Ball Traps in the suit patent and the defendants‟ AFCS was of no consequence, as the plaintiff had patented, not the Ball Trap but the entire ATCS, and there was, undeniably, a Ball Trap both in the ATCS and the AFCS. The number of pumps, too, submits Mr. Valsangkar, makes no substantial difference to the system itself. Mr. Valsangkar further submits, reiterating his earlier contention, that, even on the aspect of infringement of the suit patent by the impugned AFCS of the defendants, the defendants‟ conduct was relevant. In the context of these submissions, Mr. Valsangkar has relied on paras 18 to 20 and 22 of F.M.C. Corporation v. Natco Pharma Ltd[6], paras 22, 26, 29, 30, 32, 35, 37, 38, 40 and 41 of Sotefin SA v. Indraprastha Cancer Society & Research Center[7] and paras 24, 25 and 30-33 of the decision of a Division Bench of this Court in F.M.C. Corporation v. Natco Pharma Ltd[8], which dismissed the appeal from the decision of the learned Single Judge in F.M.C. Corporation[6]. He again relies on the report of the Local Commissioner in the present case, which did not distinguish between the ATCS and the AFCS on the basis of the number of pumps, or the presence or absence of the ball counting system. The learned Local Commissioners, he points out, were not mere Counsel, but were patent agents, and their view was, therefore, entitled to weight and value. 4.[8] Mr. Valsangkar has emphasised the following drawbacks which were found to exist in the tube cleaning systems which were in vogue 2022 SCC OnLine Del 2994 2022 (89) PTC 602 (Del) on the date at the time when ATCS was conceptualised by the plaintiff: “a. The prior existing systems had a recirculation pump which operates continuously resulting into high power consumption. b. The sponge rubber balls pass through the pump impeller (i.e., the rotating part of the pump) resulting into wear and tear of the sponge balls, which in tum affects cleaning efficiency thereby increasing the frequency of maintenance. c. The balls enter the heat exchangers one by one and not simultaneously, which causes the sponge balls to pass through the middle tubes more frequently than the peripheral tubes thereby leading the peripheral tubes not being properly cleaned resulting in poor performance of heat exchangers. d. The nature of the ball trap design causes the sponge balls to get lost into the cooling water stream and blocking the cooling tower nozzles resultantly reducing the performance of the cooling tower and the equipment drastically and also creating the need to add sponge balls on regular basis. e. There were no means for separating the undersized balls for the above method which affects the cleaning performance. As also there was no availability of cleaning body counting system because of the way the sponge balls were injected and collected for the above method. f. In the prior known systems, the water was drained or wasted during the cleaning bodies' collection cycle. Additionally, initially, the air had to be purged out of the system with the help of air vent from the collector where the balls are housed. During that process, the cleaning bodies tend to come out which caused problem to the operator in retaining the cleaning bodies inside the collector as there is a single vessel to keep the cleaning bodies and to vent the air. g. Additionally with such prior known methods there was limitation to operate multiple heat exchangers using one system thereby increasing the effective cost.” 4.[9] Mr Valsangkar also pleads copyright infringement. He submits that the following photographs used by the plaintiff, in the brochure for its ATCS, as representing the condition of the AC ducts before and after use of the cleaning system, have been borrowed, as they are, by the defendant, in the brochure for the AFCS:

5. Case of the defendant 5.[1] Ms Sneha Jain argued for the defendant. 5.[2] Ms. Jain acknowledges, at the outset, that, to make out a case of patent infringement, only the essential elements of the suit patent need be copied. She submits, however, that the star integers of the suit patent were set out in the complete specifications of the suit patent itself and that among these star intriguers were at least two pumps, two ball collectors and one counting system. These, therefore, were essential requirements of the invention as claimed in the suit patent, and it could not be said that a system which had only one pump, one collector and no counting system was at all similar to the suit patent. The differences could not be, therefore, regarded as inconsequential. Ms. Jain points out that, in fact, all the six essential features of the ATCS, as delineated in Claim 1 of the suit patent, were absent in the AFCS. 5.[3] The ATCS, submits Ms. Jain, specifically envisaged the existence of two pumps, one to injunct balls into the system and the other to suck out the balls from the system. Two ball collectors were also envisaged in the suit patent so as to ensure that, at all points of time, a particular number of balls were circulating in the system. She, therefore, reiterates her contention that the features specifically mentioned in Claim 1 of the suit patent were essential features of the ATCS and that the AFCS, which did not possess the said features, could not be said to infringe the suit patent. 5.[4] Apropos the allegation of breach of confidentiality, Ms. Jain submits that the data which, according to Mr. Valsangkar was confidential and was misused by the defendants, was already in the public domain and was, therefore, outside the scope of the Confidentiality Agreement between the plaintiff and Carrier. She has relied, in this context, on Clauses 4(a) and (b) of the Confidentiality Agreement, which excepted, from the scope of confidentiality, information which, even though received pursuant to the Confidentiality Agreement, was either publically known or was already known to the receiving party at the time of disclosure, as evidenced by written documentation of the receiving party. Viewed thus, she submits that the defendants could not be charged with having breached any term of confidentiality between the plaintiff and the defendants. 5.[5] On the allegation that the defendants‟ Ball Trap infringed the suit patent, Ms. Jain has drawn my attention to para 25 of the rejoinder of the defendants‟ in IA 10931/2022 (preferred by the defendants under Order XXXIX Rule 4 of the CPC). She points out that, in the said paragraph, the defendants have referred to various prior arts which disclosed Ball Traps similar to that used by the plaintiff in its ATCS. Putting forward a Gillette defence, Ms. Jain submits that, in fact, the Ball Trap of the defendants was similar to the Ball Traps at serial nos. „e‟ and „f‟ in the said table. She submits that it is clear, from the said tabular statement, that Y shaped Ball Traps were common to the trade and were regularly used in the industry to clean air conditioning units. She submits, relying on the following passage from Saltman Engineering Co.[2] that no party could claim confidentiality over something which was public property and public knowledge: “I think that I shall not be stating the principle wrongly, if I say this with regard to the use of confidential information. The information, to be confidential, must, I apprehend, apart from contract, have the necessary quality of confidence about it, namely, it must not be something which is public property and public knowledge. On the other hand, it is perfectly possible to have a confidential document, be it a formula, a plan, a sketch, or something of that kind, which is the result of work done by the maker on materials which may be available for the use of anybody; but what makes it confidential is the fact that the maker of the document has used his brain and thus produced a result which can only be produced by somebody who goes through the same process. What the defendants did in this case was to dispense in certain material respects with the necessity of going through the process which had been gone through in compiling these drawings, and thereby to save themselves a great deal of labour and calculation and careful draughtsmanship. No doubt, if they had taken a finished article, namely, the leather punch, which they might have bought in a shop, and given it to an expert draughtsman, that draughtsman could have produced the necessary drawings for the manufacture of machine tools required for making that particular finished article. In at any rate a very material respect they saved themselves that trouble by obtaining the necessary information either from the original drawings or from the tools made in accordance with them. That, in my opinion, was a breach of confidence.” 5.[6] What the plaintiff was seeking to do, she submits, was to treat an ordinary Ball Trap, which was a common fixture in AC tube cleaning systems, as confidential. Ms. Jain submits that the following passages, from Seager[3] also underscore this legal position: “I start with one sentence in the judgment of Lord Greene M.R. in Saltman Engineering Co.2: “If a defendant is proved to have used confidential information, directly or indirectly obtained from the plaintiff, without the consent, express or implied, of the plaintiff, he will be guilty of an infringement of the plaintiff's rights.” To this I add a sentence from the judgment of Roxburgh J. in Terrapin Ltd. v. Builders' Supply Co. (Hayes) Ltd.[9] which was quoted and adopted as correct by Roskill J. in Cranleigh Precision Engineering Ltd. v. Bryant10: “As I understand it, the essence of this branch of the law, whatever the origin of it may be, is that a person who has obtained information in confidence is not allowed to use it as a spring-board for activities detrimental to the person who made the confidential communication, and springboard it remains even when all the features have been published or can be ascertained by actual inspection by any member of the public.” The law on this subject does not depend on any implied contract. It depends on the broad principle of equity that he who has received information in confidence shall not take unfair advantage of it. He must not make use of it to the prejudice of him who gave it without obtaining his consent. The principle is clear enough when the whole of the information is private. The difficulty arises when the information is in part public and in part private. As, for instance, in this case. A good deal of the information which Mr. Seager gave to Copydex was available to the public, such as the patent specification in the Patent Office, or the “Klent” grip, which he sold to anyone who asked. If that was the only information he gave them, he could not complain. It was public knowledge. But there was a good deal of other information he gave them which was private, such as the difficulties which had to be overcome in making a satisfactory grip; the necessity for a strong, sharp tooth; the alternative forms of tooth; and the like. When the information is mixed, being partly public and partly private, then the recipient must take special care to use only the material which is in the public domain. He should go to the public source and get it: or, at any rate, not be in a better position than if he had gone to the public source. He should not get a start over others by using the information which he received in confidence. At any rate, he should not get a start without paying for it. It may not be a case for injunction or even for an account, but only for damages, depending on the worth of the confidential information to him in saving him time and trouble.” [1960] R.P.C. 128, 130, C.A. [1965] 1 W.L.R. 1293 Ms. Jain also submits that the plaintiff cannot simultaneously plead confidentiality and seek patent protection. 5.[7] Ms. Jain also disputes Mr. Valsangkar‟s contention that Defendants 3 and 4 were novices in the air conditioner cleaning industry. She submits that they had more than 15 years‟ experience in the field or in associated endeavours. 5.[8] Adverting, again, to her submission that the AFCS did not possess the essential features of the suit patent, Ms. Jain has once again referred me to Claim 1 in the suit patent. She, thereafter, draws my attention to the “background of the invention”, as set out in the complete specifications of the suit patent, already reproduced in para 2 supra. Ms. Jain points out that, in the section relating to the “background of the invention” with respect to the suit patent, it is specifically asserted that the tube cleaning systems in existence (i) had a single circulation pump which operated continuously, resulting in higher power consumption, (ii) did not have any material to separate under-sized balls, which affected the cleaning performance, and (iii) did not contain cleaning body counting systems because of the way in which the balls were injected and collected. Having thus set out the disadvantages of the existing tube cleaning systems, the complete specifications of the suit patent went on to summarise the invention thus: “Accordingly, the present invention provides a system for cleaning tubes of a shell and tube heat exchanger using a plurality of cleaning bodies, the system comprising a first collector positioned upstream of the shell and tube heat exchanger for holding the cleaning bodies in a rest position, a first pump providing a circulation medium for pumping the cleaning bodies of the first collector into the shell and tube heat exchanger, a trap positioned downstream the shell and tube heat exchanger to arrest the cleaning bodies flowing therefrom, a counting system for counting of cleaning bodies flown out of the trap, an electronic controller monitoring and controlling the number of the cleaning bodies passing through the shell and tube heat exchanger, a second collector capable of being sorting undersized cleaning bodies coming out of the trap and a second pump positioned downstream of the second collector to collect the undersized cleaning bodies in the second collector.” Thus, the summary of the invention in the complete specifications relating to the suit patent specifically emphasised the existence of (i) two collectors with two separate functions, (ii) two pumps, (iii) a Ball Trap, (iv) a counting system, (v) a sorting system, and (vi) an electronic controller. These components were intended to achieve the object of the invention which, to the extent relevant, may be reproduced thus: “An object of the present invention is to provide reliable system for cleaning tubes of a shell and tube heat exchanger having improved, performance and efficiency of shell and tube heat exchangers. Another object of the present invention is to provide a system for cleaning tubes of a shell and tube heat exchanger, such that system uses batch process for injection and collection of the cleaning bodies and ensure proper cleaning of tubes. Yet another object of the present invention is to provide almost simultaneous injection of the cleaning bodies at the inlet of heat exchanger. Still another object of the present invention is to provide a system for cleaning tubes of a shell and tube heat exchanger, which uses a split design trap for catching the cleaning bodies and also in case of maintenance, all the parts of the ball trap can be dismantled and cleaned easily and for the ease of maintenance and to offer a zero-ball loss system. Further object of the present invention is to provide an automatic sieve gate which can be opened in case the pressure drop in the trap increases beyond the specified limit. Furthermore object of the present invention is to provide a uses a simple ball sorting arrangement to sort the undersized balls to enhance the system performance. One more object of the present invention is to provide a includes a pump to create a positive pressure positioned upstream of the collector to inject a plurality of cleaning bodies into the inlet of the heat exchanger and an another pump to create suction at the downstream of the ball collector to collect the cleaning bodies. Another object of the invention is to provide means for counting of the cleaning bodies, so that required number of cleaning bodies are maintained which will help to maintain efficiency and performance of heat exchangers always at optimum level. As the undersized cleaning bodies will be moved to the sorting chamber, the number of cleaning bodies (balls) circulated through the heat exchanger would reduce; therefore it is vital to have cleaning body counting mechanism which will give an alarm in the event that the number of cleaning bodies re-circulated is reduced below the minimum acceptable limit.” 5.[9] Ms. Jain has also invited my attention to the FER dated 22nd January 2020 issued by the Controller of Patents in response to the application of the plaintiff for registration of the suit patent, in which the plaintiff has differentiated the prior arts D[1], D[2], D[3], D[7], D[8], D11, D12 and D14, cited in the FER, thus: Differentiator vis-à-vis D[1] Differentiator 1) The invention in D[1] relates to impregnating balls with water. The invention explains an open to air hopper holding the balls in a dry condition and an arrangement with piston/diaphragm to remove air from the balls. However, the document does not disclose the concept of the first ball collector and the second ball collector as that of the present patent application.

2) In D[1], the deflecting worn balls by opening the valves (referred as 52, 6 and 15 in said document) when the ball quantity is less to a separate ball sorting chamber by diverting the water flow through worn ball collector, tank and water outlet duct. During normal operation the valves (52, 6 and 15) are closed. In normal course of operation, water doesn‟t flow through the sorting chamber. In said system, balls and the water are always passing through the circulation pump. Whereas the present patent application discloses push and pull mechanism with separate pumps and parallel arrangement with ball sorting arrangement without balls passing through the pumps in due course of ball collection operation and without the need of diverting the flow to the ball sorting chamber specifically by using complicated valve diversion mechanism. Instead the present patent application discloses ball chamber cum sorter with the single chamber/vessel.

3) The document D[1] describes circulating pump directly connected to grid device wherein water and cleaning bodies both pass through the pump. The circulation pump continuously runs. Whereas the present patent application discloses a separate pump connected from trap through the counting mechanism, non-return valve, the first collector and the second collector so that ball sorting is naturally facilitated while collecting the cleaning bodies during the collection cycle.

4) The document D[1] does not sufficiently disclose about the design of the ball counting arrangement and the ball counting is done continuously. As the circulation pump runs continuously and the number of balls in circulation are less, at a given time balls are spread everywhere i.e. in condenser tubes, conduits, pump, ball collector, ball trap etc. and therefore chances of passing more than one number of balls at a given time are very less. Whereas the present patent application discloses the mechanical arrangement of ball counting system consisting of convergent and divergent arrangement so that cleaning bodies are counted accurately. As the ball collection is a batch process and more than one ball passing through the pipe at a time while collection gives false count, the arrangement disclosed in present patent application is very critical for proper functioning of the ball count. In addition, the present patent application discloses ball sorting without using additional deflecting/diverting valves by connecting the ball sorting chamber/collector to the suction of the collection pump.

5) The document D[1] describes the ball sorting collector connected to a hopper arrangement which uses diaphragm pump to impregnate the cleaning balls. Whereas, the present patent application uses a separate collection pump which facilitates ball collection as well as ball sorting.

6) The document D[1] discloses a collector with vertical grid arrangement and acts as sorting grid and the balls can‟t be rested on this grid. Whereas, the present patent application discloses the collector with horizontally mounted perforated disc shaped mesh which facilitates resting of sorted undersized balls and facilitates eventually manual removal of undersized balls. Differentiator vis-à-vis D[2] Differentiator The document D[2] document fails to disclose use of transmitter and receiver in conjunction with other elements of the present patent application such as convergent and divergent mechanical arrangement for ball counting, use of two pumps where balls are never in contact with the pumps and the split design ball trap. Differentiator vis-à-vis D[3] Differentiator 1) The system mentioned in D[3] has no separate pump to facilitate collection and sorting of the balls. The document only describes operation through differential pressure however, does not specify the exact position of the pump. The system employs a secondary cyclone disposed within a primary cyclone and uses a cyclonic effect for separating a plurality of balls below a predetermined diameter and separating debris from the fluid. Also the system works on differential pressure. Whereas the present patent application discloses an arrangement with dual collector separated by a vertical mesh/grid and uses a separate injection pump and collection pump. The ball sorting is done efficiently by using the pressurized movement of undersized bodies to the second collector and does not function on the cyclonic effect.

2) The document D[3] does not disclose the exact arrangement for ball counting in detail and claims that the ball counter is a magnetic device for operating with balls having an asymmetrical weighted metallic core. Whereas the present patent application discloses the are counted accurately. As the ball collection is a batch process and more than one ball passing through the pipe at a time while collection gives false count, the arrangement disclosed in present patent application is very critical for proper functioning of the ball count. Differentiator vis-à-vis D[7] Differentiator 1) The document D[7] discloses an inline heat-exchanger cleaning system that uses a single pump and complicated arrangement of multiple automated valves to divert the flow of water to inject and collect the balls. Whereas, the present invention discloses the simple arrangement of injecting and collecting the balls by using two separate pumps and with less number of automated valves.

2) The present application discloses the mechanical arrangement of ball counting system consisting of convergent and divergent arrangement so that cleaning bodies are counted accurately and the split design ball trap provides quick dismantling for easy cleaning and offer a zero-ball loss system. But in D[7], no mention of mechanical arrangement of ball counting system and the split design ball trap is present. Differentiator vis-à-vis D[8] Differentiator The document D[8] discloses a system which uses pressurizing and depressurizing the ball collector with the help of compressed air. It involves draining water in every cycle. separate pumps. Further, the present application discloses the are counted accurately and the split design ball trap provides quick dismantling for easy cleaning and offer a zero-ball loss system. However, document US5447193 does not disclose the mechanical arrangement of ball counting system and the split design ball trap as that of the present patent application. Differentiator vis-à-vis D11 Differentiator 1) The document D11 discloses use of two pumps but the pumps are arranged in such a way that it needs more number of automated valves and a complex mechanism of ball injection and collection. Total five numbers of automated valves need to be operated for every injection and collection cycle. arrangement of two pumps in such a way that only one automated valve needs to be operated for injection and another automated valve needs to be operated for collection of balls and while collection of balls it naturally facilitates the sorting of undersized balls.

2) The document CN201184768 does not disclose a mechanism of sorting of undersize balls. Whereas, the present application discloses the are counted accurately, the first collector and the second collector and the split design ball trap provides quick dismantling for easy cleaning and offer a zero-ball loss system. Differentiator vis-à-vis D12 Differentiator The document D12 discloses use of two pumps but involves a complex mechanism of ball injection and collection. Whereas, the present patent application discloses the simple separate pumps with ball sorting, ball counting arrangement and with a split ball trap design. Differentiator vis-à-vis D14 Differentiator The document D14 discloses use of two pumps but not in the same manner that is disclosed in the present patent application. Document CN201285249 discloses use of two pumps and four numbers of automated valves with the complex arrangement. Further, document CN201285249 does not disclose a mechanism of sorting of undersize balls. arrangement of two pumps in such a way that only one automated valve needs to be operated for injection and another automated valve needs to be operated for collection of balls and while collection of balls it naturally facilitates the sorting of undersized balls. Further, the present application discloses the are counted accurately, the first collector and the second collector and the split design ball trap provides quick dismantling for easy cleaning and offer a zero-ball loss system.

5.10 From the aforesaid assertions, in the plaintiff‟s reply to the FER, by which the plaintiff sought to claim the existence of inventive step in the suit patent, vis-à-vis the prior art documents D[1], D[2], D[3], D[7], D[8], D11, D12 and D14, Ms. Jain points out that the existence of two pumps, two collectors, a sorting mechanism, a counting mechanism, a split trap design and a controlling controller were all cited by the plaintiff as inventive features vis-à-vis prior art, so as to obtain the suit patent. None of these features, she submits, are present in the defendants‟ AFCS. She has drawn my attention, in this context, to the following tabular statement, provided by the defendants, to differentiate the defendants‟ AFCS from the suit patent relating to the plaintiff‟s ATCS:

(i) a single pump two pumps, identified as first pump

(ii) a single ball collector, with a single mesh incapable of ball sorting two collectors, identified as first collector (112) and second collector (150)

(iii) the first collector (112) has two meshes, identified as conical mesh

(114) and disc shaped perforated mesh (116)

(iv) no counting system (since there is no sorting and segregation of undersized cleaning bodies), and ball eounting system (130)

(v) an in-line ball trap with a completely different design from that of IN '118

(vi) The control logic of Defendants is designed for single circuit and single pump design and is completely different from the electronic controller of the Plaintiff. electronic controller (140) which controls the operation of the system, monitors number,of cleaning bodies and monitors signals from counting system.

5.11 The controlling logic of the defendants‟ AFCS is, therefore, totally distinct and different from the plaintiff‟s ATCS. The manner in which the plaintiff has mapped its claim itself indicates that there are some features of the plaintiff‟s suit patent which are not even present in the defendants‟ AFCS.

5.12 Ms. Jain has also referred, in this context, to the following infringement chart which was sought to be introduced by the plaintiff by amending para 32 of the plaint, vide IA 19484/2022, and which the plaintiff was permitted to rely upon, by order dated 23rd November 2022 passed by this Court in the present proceedings: Patented ATC System Infringing System An Online System for cleaning tubes of at least one Shell and tube heat exchanger using plurality of cleaning bodies. An Online System for cleaning tubes of at least one Shell and tube heat exchanger using plurality of cleaning bodies. Atleast one first collector (Ball Collector) positioned upstream; Atleast one second collector capable of collecting the sorted undersized cleaning bodies coming from the first collector. OR Atleast one Dual collector having first chamber for holding the cleaning bodies in rest position and second chamber for collecting the sorted undersized cleaning bodies. Ball collector of the Infringing system for holding the cleaning bodies in rest position. A comparison of the Infringing system's ball collector with the Plaintiffs ATC system reveals that the Infringing system's ball collector is an exact replica of the Plaintiffs ATC system's Ball Collector. The dual collector includes at least one sight glass facilitating insertion and removal of the cleaning bodies in the first chamber and the second chamber. Ball collector includes sight glass facilitating insertion and removal of the cleaning bodies in the first chamber and the second chamber. The first chamber of the dual collector has a horizontal perforated mesh positioned at a bottom portion to hold the cleaning bodies in the rest position before injection into the plurality of Ball collector has a horizontal perforated mesh positioned at a bottom portion to hold the cleaning bodies in the rest position before injection into the plurality of tubes tubes Atleast one trap (Ball trap) positioned downstream. As can be seen from the images shared by the Defendants, the ball trap of the Infringing System is a Ball trap positioned downstream. Ball trap is a split type trap. Ball trap is a split type trap. The trap encloses a perforated mesh and an automatic sieve gate. The trap encloses a perforated mesh. Atleast one electronic controller Atleast one electronic controller. Ms. Jain submits that, in the above infringement chart, as drawn up by the plaintiff, the plaintiff has cherry picked elements from various claims in the suit patent to allege infringement by the defendant. She submits that the plaintiff has nowhere sought to contend that the defendants‟ AFCS had any counting system; a feature which was specifically identified by the plaintiff as conferring advantage to the suit patent vis-à-vis prior art.

5.13 In support of her contention, Ms. Jain relies on paras 28 and 32 of the judgment of the Coordinate Bench in Sotefin SA[7], which read thus:

32. This aforenoted decision is strongly relied upon by Mr Saikrishna to contend that there is no infringement in the instant case, as all elements of Claim 1 are not found in the infringing product. In the opinion of the court, the afore noted legal proposition canvassed by Mr Saikrishna is not entirely correct, although there is some merit in this submission. For patent infringement analysis, comparison of elements of the suit patent's claims is to be done with the elements/claims of the infringing product. On comparison, there can be a case of non-literal infringement, where each and every component of patent specification is not found in the infringing products. In other words, all the elements of a claim may not entirely correspond in the infringing product, as has been pointed by the experts, in the instant case. However, it does not inevitably mean that there can be no infringement. It is the pith and marrow of the invention claimed that is required to be looked into, and we do not have to get lost 1966 RPC 441 1961 RPC 296 1963 RPC 61 into the detailed specifications and do a meticulous verbal analysis which the parties have engaged into the court.” Ms. Jain submits that the doctrine of equivalents would not apply in the present case as the plaintiff did not identify any substitute by the defendant, substituting any of the essential elements of the claim in the suit patent.

5.14 Apropos Mr. Valsangkar‟s claim of copyright infringement, Ms. Jain submits that the claim was completely bereft of necessary particulars such as specification of the author of the copyright etc. Nonetheless, she submits, on instructions, that her client is willing not to make use of the photographs in which the plaintiff claims copyright.

5.15 Predicated on these submissions, Ms. Jain prays for rejection of the plaintiff‟s application under Order XXXIX Rules 1 and 2 of the CPC.

6. Case of plaintiff in rejoinder 6.[1] Mr. Valsangkar submits in rejoinder, on the aspect of misuse of confidential material of the plaintiff, that the defendant had failed to show any manner in which it had obtained access to the plaintiff‟s confidential drawings except as provided by the plaintiff. Equally, he submits, the defendant has failed to show that the said confidential drawings were in the public domain, so as to be entitled to the benefit of Clause 4 of the Confidentiality Agreement dated 4th August 2017. 6.[2] Mr. Valsangkar further submits that, having itself applied for registration of the design for the inland Ball Trap, the defendant was estopped from contending that the design was common to the trade or, therefore, not registrable. In any case, as the plaintiff, in its claim in the suit patent, merely claimed the existence of a Ball Trap, the distinction that the defendants‟ attempt to distinguish between a split trap and a Y type Ball Trap was irrelevant. Analysis

7. I have heard learned Counsel for the parties and applied myself to the rival submissions made at the Bar as well as the material on record. Lengthy though the arguments at the Bar were, the issues in controversy are elementary, and capable of immediate resolution. I proceed, therefore, to address the various issues raised by Mr. Valsangkar in the present case, seriatim, as under.

8. Re. allegation of misuse of confidential information 8.[1] Mr. Valsangkar‟s first contention is that the defendants, particularly Defendants 3 and 4, misused the confidential information, in the form of drawings relating to the plaintiff‟s ATCS, which were in their possession, both to seek a patent in respect of the inline ball trap as well as to fabricate the AFCS which, according to Mr. Valsangkar, infringes the suit patent. 8.[2] At the very outset, I may note that it cannot possibly be alleged that the defendants had, in any surreptitious fashion, come into possession of the confidential information of the plaintiff. The e-mail correspondences cited in para 4.[2] supra make it clear that Defendants 3 and 4 came into possession of the plaintiff‟s confidential information partly through e-mails addressed by the plaintiff itself to Defendants 3 and 4 and partly through e-mails addressed by Voltas. If, in sharing the said information, Voltas violated any Confidentiality Agreement with the plaintiff, the defendants, quite obviously, are not to blame. The clock could not have been put back. Knowledge, once learned, cannot be unlearned. Indeed, Mr. Valsangkar, quite fairly, did not dispute the fact that the manner in which the defendants came into possession of the plaintiff‟s confidential information could not strictly be faulted. 8.[3] Mr. Valsangkar‟s contention is, however, that Defendants 3 and 4, through Defendants 1 and 2, proceeded, having come into possession of the confidential drawings and information, of the plaintiff, to misuse the said information so as to fabricate the AFCS and seek a patent for the inline ball trap. 8.[4] There is no material, whatsoever, to support the said allegation. To repeated queries from the Court as to the basis on which the plaintiff was seeking to allege that the AFCS had been designed by poaching on the confidential information of the plaintiff, the only submission that Mr. Valsangkar offers is that, the coincidences were too many. He seeks to point out that, within less than a month of coming into possession of the confidential information, of the plaintiff, Defendant 3 resigned from the Carrier and, within 15 days thereof, applied for a patent for the Inline Ball Trap. The AFCS was also fabricated, by the defendants, within a short span of time thereafter. Given the fact that the defendants did not have prior history or experience in the matter of fabrication of cleaning systems, Mr. Valsangkar would seek to draw an inference that the defendants had misused the confidential information of the plaintiff, available with them. 8.[5] Ms. Sneha Jain has disputed the fact that the defendants did not have any prior experience in fabricating air conditioning or heating systems. At a prima facie stage, it is not necessary for this Court to travel down that path. It is axiomatic, in law, that suspicion, howsoever grave, is no substitute for proof. Claims in commercial suits need evidence to back them up. The mere fact that, very shortly after coming into possession of the confidential drawings of the plaintiff, Defendant 3 left Carrier, or applied for a patent for the Inline Ball Trap, cannot allow the Court to hold, even prima facie, that Defendant 3 had misused the plaintiff‟s confidential drawings. The allegation of misuse of confidential information cannot, therefore, be sustained, prima facie.

9. Re. allegation of patent infringement 9.[1] Apropos the allegation of patent infringement, one needs merely to refer to Claim 9 in the suit patent, which already stands reproduced hereinabove and which delineates, explicitly, the essential features of the claimed invention. It has been set out, in the said claim, in clear and unequivocal terms, that the claimed invention was a system comprising, inter alia, of at least two collectors, two pumps, one trap, one sorting system and one counting system. 9.[2] Ms. Jain contends, and Mr. Valsangkar does not dispute, that, in the AFCS, there was in fact only one pump, no sorting system and no counting system. Mr. Valsangkar sought to invoke, to contest this submission, the doctrine of pith and marrow, for which purpose he has cited the decisions of the Single Bench and the Division Bench in F.M.C. Corporation[6] and F.M.C. Corporation[8], the decision of a learned Single Judge in Sotefin[7] and the decisions in Saltman[2] and Seager[3]. “Pith and marrow”, I may note, a mere felicitous expression used for the principle, to which Ms. Jain acquiesces, that patent infringement requires copying only of the essential features of the suit patent; its pith and marrow, as it were. Mr. Valsangkar contends that the incidental differences between the AFCS and ATCS notwithstanding, the pith and marrow of the ATCS stand replicated in the AFCS; ergo, patent infringement has occurred. 9.[3] Learned Counsel being ad idem on the legal principle, the need to refer to these decisions stands obviated. The question of applying the doctrine does not, however, arise in the present case as the plaintiff has, in explicit terms, in the complete specifications of the suit patent, set out, precisely, the essential features of the claimed invention. The manner in which claims in a patent are to be construed has been thus explained by the Supreme Court in Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries14:

2015) 63 PTC 257 (Del-DB) complete specifications, which postulates that the ATCS “provides a system for cleaning tubes of a shell and tube heat exchanger using a plurality of cleaning bodies, the system comprising a first collector positioned upstream of the shell and tube heat exchanger for holding the cleaning bodies in a rest position, a first pump providing a circulation medium for pumping the cleaning bodies of the first collector into the shell and tube heat exchanger, a trap positioned downstream the shell and tube heat exchanger to arrest the cleaning bodies flowing therefrom, a counting system for counting of cleaning bodies flown out of the trap, an electronic controller monitoring and controlling the number of the cleaning bodies passing through the shell and tube heat exchanger, a second collector capable of being sorting undersized cleaning bodies coming out of the trap and a second pump positioned downstream of the second collector to collect the undersized cleaning bodies in the second collector”. The functional necessity of these components of the ATCS also stands explained in the complete specifications, which envisages “injection and collection of the cleaning bodies”, “almost simultaneous injection of the cleaning bodies at the inlet of the heat exchanger”, “a simple ball sorting arrangement to sort the undersized balls and enhance the system performance”, “a pump to create a positive pressure positioned upstream of the collector to inject a plurality of cleaning bodies into the inlet of the heat exchanger and another pump to create suction at the downstream of the ball collector to collect the cleaning bodies”, and, as “another object of the invention, … means for counting of the cleaning bodies so that required number of cleaning bodies are maintained which will help to maintain efficiency and performance of heat exchangers always at optimum level”. The complete specifications go on, even more unequivocally, to declare that “as the undersized cleaning bodies will be moved to the sorting chamber, the number of cleaning bodies (balls) circulated through the heat exchanger would reduce, therefore it is vital to have cleaning body counting mechanism which will give an alarm in the event that the number of cleaning bodies re-circulated is reduced below the minimum acceptable limit”. Each component was, therefore, an integral and unalienable part of the ATCS. 9.[5] Whether, therefore, one proceeds as per the claims in the suit patent, or the summary of the invention as provided by the plaintiff itself in the complete specifications of the suit patent, two collectors having two separate functions, two pumps, a Ball Trap, a counting system, a sorting system and an electronic controller are identified and underscored as the essential features of the suit patent. In an infringement proceeding, the complete specifications of the suit patent are sacrosanct. Once the plaintiff has itself identified these features as essential to the suit patent, it stands estopped from contending that they are not essential, so as to substantiate the case of infringement that it seeks to make out against the defendant. Not only do the complete specifications of the suit patent identify these essential features; as Ms. Jain correctly points out, in response to the FER which was issued at the time when the plaintiff applied for grant of the suit patent, and the various prior arts (D-1), the plaintiff had emphasised the existence of two pumps, a counting system, and a sorting system as the essential features which distinguished the claim in the suit patent from prior art. Patents are available only for inventions, and inventions have, statutorily, to incorporate an inventive step vis-à-vis prior art. The inventive step is, therefore, the very raison d’etre of the patent. The plaintiff is bound by what it itself claimed to be inventive, in the ATCS, vis-à-vis prior art. No occasion arises, therefore, for the Court to hyper analyse the suit patent and discern, for itself, its essential features. 9.[6] It is also clear that the entire manner of working of the ATCS, as conceptualized and envisioned by its inventor, involves a detailed process of cleaning the tubes of the A/c system, which requires an integrated working of all these components. None of them is, therefore, dispensable. Ms. Jain is, therefore, correct in her submission that the very method of working of the AFCS, which does not require these components, is different from that of the ATCS, so that there can be no question of infringement of the latter by the former. 9.[7] The AFCS is, therefore, prima facie dissimilar both to Claim 1 and Claim 9 in the suit patent. 9.[8] The allegation of patent infringement too, therefore, is, prima facie, devoid of substance.

10. Inasmuch as the prayers in the plaint seek injunctive reliefs qua the entire AFCS of the defendants, I am not, at this prima facie stage, proceeding to examine the aspect of application of a patent, by the defendants, for the Inland Ball Trap. The defendants claim that the Ball Trap used in the AFCS and that used in the ATCS are different. Mr. Valsangkar, while disputing the contention, submitted that, as the claim of infringement, in the suit, was qua the whole AFCS of the defendants, the difference, if any, between the Ball Traps was not of much consequence. As I have found the AFCS to be, prima facie, not infringing the suit patent, no prima facie findings need be returned on the distinction, if any, between the two Ball Traps.

11. Apropos the aspect of copyright infringement, Ms. Jain has, without prejudice to her contentions in that regard, undertaken, on behalf of her client, not to use the allegedly infringing pictures reproduced in para 4.[9] supra, pending disposal of the suit. The defendants shall remain bound thereby. Conclusion

12. For the aforesaid reasons, these applications are disposed of thus:

(i) IA 8575/2022 is dismissed.

(ii) IA 10931/2022 is allowed.

(iii) The defendants are, however, directed to remove, within a week of uploading of this judgement on the website of this Court, the photographs reproduced in para 4.[9] supra, from all physical and electronic locations.

13. The Court appreciates the manner in which Ms. Sneha Jain, the young associate of Mr. Saikrishna Rajagopal, argued this matter with considerable felicity, opposite a seasoned Mr. Valsangkar.

C. HARI SHANKAR, J.