RAVI KAMAL BALI VS. KALA TECH AND ORS. 2008 (110) BOM LR 2167
FACTS
- Both the plaintiff and the defendant were manufacturers of tamper proof locks and seals that had industrial application. The Plaintiff apart from claiming an infringement of his patent also claimed that Defendant No. 3, who used to work for The Plaintiff, conspired with Defendant No. 1 in the manufacturing of the locks and the seals.
- Both the products used near identical material i.e. Spring Steel with a slight difference in quality of the material used in the two. A difference between the two products also existed in respect to the shape of the product.
- While the Plaintiff's product was in the shape of a "V", that of the Defendant was rectangular in shape with 4 walls. The last difference between the two prod its was also in the number of "vanes" used in the two products.
ISSUE
- Whether the product of the Defendant is an infringement of the product of the Plaintiff thus constituting a breach of the patent that was held by the Plaintiff.
HELD
- The Plaintiff and its counsel wanted the Courts to apply the Doctrine of Equivalence which is mainly used in the United States of America. The Doctrine of Equivalence states that in order for a device to infringe a claim it needs to perform substantially the same function in substantially the same way to obtain the same result. The main test is whether the defendant's product has taken the pith and marrow or sometimes what is called the essence of the invention. The Court was of the view that in order to establish the Doctrine of Equivalence they will have to observe the built, structure, functionality and shape of the products.
- When it came to the material that had been used in the manufacturing process the Court was of the view that both the products used the same material i.e. Spring Steel. The Court further observed that the marginal difference in the quality of the two products will not amount to any difference between the two inventions.
- The next aspect of the products that was considered by the Courts was the shape of the Products. The shape of the Defendant's Product was in the shape of a rectangle while that of the Plaintiff was in the shape of a "V". The learned judge stated that in no way did the rectangular shape of the products of the Defendant contribute to the Functional Novelty of the product. There was in no way that the shape of the product contributed to the any change or improvement in the functionality of the product.
- The last thing that the Courts looked into was whether an additional number of "Vanes" in the product of the Defendant would lead to a substantial difference in the two products. The Court held in the negative stating that the constructional and functional aspect of the products remained the same.
- The Court was of the view that the product of the defendant did infringe the patent of the Plaintiff. The ulterior reasoning was that there was no substantial difference between the two products. The slight additions made to the product of the Defendant would not constitute a new product. If it was recognised as a new product then the potential for misuse would be very high as people would just change trivial aspects of patented products and would claim a new patent on it.