Dhanpat Seth And Ors. v.

Nil Kamal Plastic Crates Ltd

In the

Honble High Court of Himanchal Pradesh,

Shimla
____________________________________________________

Dhanapat Seth and Ors.

(Appellant)

V.
Nil kamal Plastic crates ltd.
(Respondent)

____________________________________________________

Memorandum of the behalf of Respondent

Gaurav Khetpal
(Counsel on behalf of Respondent)

Semester VI

Roll. No. 065

Submitted on 04-04-2016

1|Page
 Dhanpat Seth And Ors. v. Nil Kamal Plastic Crates Ltd

TABLE OF CONTENTS

LIST OF ABBREVIATIONS 3

INDEX OF AUTHORITIES 4

NATIONAL CASE LAWS 4

BOOKS AND JOURNALS 4

STATUTES 4

STATEMENT OF FACTS 5

ISSUES RAISED 7

SUMMARY OF PLEADINGS 8

WRITTEN SUBMISSIONS 9

PRAYER FOR RELIEF .16

2|Page
 Dhanpat Seth And Ors. v. Nil Kamal Plastic Crates Ltd

LIST OF ABBREVIATIONS

& And

Anr. Another

Art. Article

Honble Honourable

Ors. Others

p. Page

Para Paragraph

S.C. Supreme Court

S.C.C. Supreme Court Cases

U.O.I. Union of India

v. Versus

vol. Volume

Ed. Edition

Art. Article

Bom. Bombay

cl clause

3|Page
 Dhanpat Seth And Ors. v. Nil Kamal Plastic Crates Ltd

INDEX OF AUTHORITIES

CASE LAWS

Ram Narain Kher v. Ambassador Industries New Delhi and Another AIR 1976 Delhi 87

Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries AIR 1982 SC 1444

R v. Patents appeal tribunal ex parte Beecham Group Ltd (1973)I All ER 627

Windsurfing v Tabur [1985] RPC 59 at 77

General Tire Rubber Co. v Fire Stone Tire and Rubber Co. Ltd [1972] RPC 457 at 485-

486 (CA)

BOOKS AND JOURNALS

P. NARAYANAN, INTELLECTUAL PROPERTY LAW (3RD EDITION, EASTERN

PUBLISHING COMPANY)
V.K. AHUJA, LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS (2ND
EDITION, LEXIS NEXS BUTTERWORTHS WADHWA)
P. NARAYAN, PATENT LAW(4TH EDITION, EASTERN LAW HOUSE)

STATUTES REFERRED

1. PATENT ACT, 1970

4|Page
 Dhanpat Seth And Ors. v. Nil Kamal Plastic Crates Ltd

STATEMENT OF FACTS

1. The appellants, hereinafter referred to as the plaintiffs, filed a suit seeking grant of
permanent prohibitory injunction restraining the defendant from infringing Patent No.
195917 granted in favour of the plaintiffs on 11-7-2005. The patent has been granted in
respect of a device used for manufacture of manually hauling the agricultural produce.

2. According to the plaintiffs, the invention was visualized by them in 1999. They
developed it over a period of time and applied for grant of patent on 24-5-2000. The
patent was granted in their favour on 11-7-2005 but it will relate back to the date of
application i.e. 24-5-2002.

3. The invention of the plaintiffs as set out by them in the plaint is as follows:
A device for hauling agriculture produce comprising a container of synthetic polymeric
material defined by a hollow frusta-conical body open at the top and closed at the base
and tapering from the operative open top to the base with perforated walls.

4. The respondent-defendant, hereinafter referred to as the defendant, in fact, sold this

device to the Department of Horticulture, Govt. of H.P. and other private parties. The
plaintiffs consequently filed a suit praying for a decree for grant of permanent prohibitory
injunction in their favor restraining the defendant from infringing the Patent No. 195917
and also for a decree of mandatory injunction virtually in the same terms.

5. The plaintiffs along with the suit filed an application for grant of interim relief seeking
temporary injunction restraining the defendant from manufacturing or selling its version
of the Kilta or committing any acts which may infringe in the patent granted to the
plaintiffs.

5|Page
 Dhanpat Seth And Ors. v. Nil Kamal Plastic Crates Ltd

6. This application was contested by the defendant and where the learned single Judge came
to the conclusion that the device patent of which was obtained by the plaintiffs is
basically an imitation of the traditional Kilta hence by an order dismissed the application
for grant of interim relief.

7. The plaintiffs have hence appealed against the order of the learned single judge.

6|Page
 Dhanpat Seth And Ors. v. Nil Kamal Plastic Crates Ltd

ISSUE RAISED

1. Whether Nil Kamal Plastic Crates Ltd has infringed the patent granted to Dhanapat
Seth and Ors.

7|Page
 Dhanpat Seth And Ors. v. Nil Kamal Plastic Crates Ltd

SUMMARY OF PLEADINGS

1. Whether Nil Kamal Plastic Crates Ltd has infringed the patent granted to Dhanapat
Seth and Ors.

By the description provided above the product made by plaintiffs is clear imitation of
KILTA which has been used in hilly areas from time immemorial thus the patent has
wrongly been granted in their favor. There is no novelty or invention in the patent and in fact
it is just centuries old device popularly known as "KILTA" which was originally made of
bamboo and has now been produced in plastic.

Apart from issue discussed above the defendant had anticipated the device in fact in
December, 2001. It designed a similar Kilta and sent drawings of the same for manufacturing
of the design to Arries Moulding Company Ltd., Taiwan and thereafter the production of the
Kilta was started and the same was introduced in the market. Thus the patent granted to
applicant should be revoked.

8|Page
 Dhanpat Seth And Ors. v. Nil Kamal Plastic Crates Ltd

WRITTEN SUBMISSIONS

1. Whether Nil Kamal Plastic Crates Ltd has infringed the patent granted to
Dhanapat Seth and Ors.

In this case the Plaintiffs have contented that there is infringement of patent granted to them by
defendants. But while closely observing the facts we may able to prove that the patent granted to
plaintiffs is in itself erroneous because plaintiffs does not have proper grounds to get the patent
over their device. Hence where patent is granted erroneously the breach cannot happen.

The invention of the plaintiffs as set out by them in the plaint is as follows:
A device for hauling agriculture produce comprising a container of synthetic polymeric material
defined by a hollow frusta-conical body open at the top and closed at the base and tapering from
the operative open top to the base with perforated walls, said perforations being essentially
quadrilateral in configuration and reducing in dimensions from the operative top to the base.

By the description provided above the product made by plaintiffs is clear imitation of KILTA
which has been used in hilly areas from time immemorial thus the patent has wrongly been
granted in their favor. There is no novelty or invention in the patent and in fact it is just centuries
old device popularly known as "KILTA" which was originally made of bamboo and has now
been produced in plastic.

Apart from issue discussed above the defendant had anticipated the device in fact in December,
2001. It designed a similar Kilta and sent drawings of the same for manufacturing of the design
to Arries Moulding Company Ltd., Taiwan and thereafter the production of the Kilta was started
and the same was introduced in the market. Thus the patent granted to applicant should be
revoked.

In order to advance both argument two sub contentions are made.

9|Page
 Dhanpat Seth And Ors. v. Nil Kamal Plastic Crates Ltd

(A) Product of plaintiff lacks inventive step.

In order to advance this argument that there is no novelty or invention in the patent granted to
plaintiffs it would be relevant to refer to the definition of invention and inventive steps in
Section 2(j) and 2(ja)) of the Patents Act, 1970.

According to section 2(j) - "invention" means a new product or process involving an inventive
step and capable of industrial application.

A bare perusal of the definition of invention clearly shows that even a process involving an
inventive step is an invention within the meaning of the Act. It is, therefore, not necessary that
the product developed should be a totally new product. Even if a product is substantially
improved by an inventive step, it would be termed to be an Invention. Again in order to deal with
plaintiffs claim that their product involved an inventive step, we should examine the word.

According to section 2(ja) - "inventive step" means a feature of an invention that involves
technical advance as compared to the existing knowledge or having economic significance or
both and that makes the invention not obvious to a person skilled in the art.

The definition of 'inventive step' provides that when technical advances as compared to existing
knowledge take place in an existing product or there is improved economic significance in the
development of the already existing device and the invention is not obvious to people skilled in
the art, it would amount to an inventive step. To meet the inventive step criterion, the patentee
will either have to show that the invention includes technical advancement or has economic
significance, or both. The requirement of technical advancement is, therefore, compromised and
diluted by the fact that a patent could simply be granted on economic significance alone.

In the case of Ram Narain Kher v. Ambassador Industries New Delhi and Another1 Delhi High
Court observed that, If the invention was obvious, there could be no inventive step whatsoever.
An inventive step which is a necessary ingredient of invention in order to make an applicant
eligible for grant of patent under the Act must be relating to an invention involving technical
1
AIR 1976 Delhi 87

10 | P a g e
 Dhanpat Seth And Ors. v. Nil Kamal Plastic Crates Ltd

advance or having economic significance or both along with a necessary factor that such
invention should make it not obvious to a person skilled in the art.

The observations made by Supreme Court in Biswanath Prasad Radhey Shyam v. Hindustan
Metal Industries2 are that A person skilled in the art would presuppose that the said person
would have the knowledge and the skill in the said field of art and will not be unknown to a
particular field of art and it is from that angle one has to see that if the said document which is
prior patent if placed in the hands of said person skilled in art whether he will be able to work
upon the same in the workshop and achieve the desired result leading to patent which is under
challenge. If the answer comes in affirmative then certainly the said invention under challenge is
anticipated by the prior art or in other words, obvious to the person skilled in art as a mere
workshop result and otherwise it is not.

While taking the way as directed by above given directions of different courts to respective cases
we should know what the Kilta is. A Kilta is a traditional product which has been used since time
immemorial for carrying produce including agricultural produce in hill areas especially in the
State of Himachal Pradesh. The traditional Kilta is made of bamboo. The shape of a Kilta is
conical having a wider circular opening on the top and it tapers and narrows down at the bottom.

So when we examine the Kilta There is virtually no difference in the overall design of the
tradition Kilta or the 'devices' developed by the plaintiffs and: the defendant. A visual
comparison of the' three items prima facie establishes that the articles manufactured by the
plaintiffs and the defendant are virtual copies of the traditional Kilta. The only difference is that
the Kilta is made of bamboo and the Kilta made by the plaintiffs is made of polypropylene
copolymer (PP). The Kilta made by the defendant is also made of polymeric material. The Kilta
manufactured by the defendant is made of high density polyethylene (HDP). In actual fact, both
the materials are polymers in common parlance known as plastic. The only visible difference is
that device now being manufactured is having detachable nylon straps with buckles.

The question which arises for consideration is whether this change of material from bamboo to
plastic and the development of adjustable nylon straps with buckles is an inventive step falling
within the meaning of Section 2{ja)?

2
AIR 1982 SC 1444

11 | P a g e
 Dhanpat Seth And Ors. v. Nil Kamal Plastic Crates Ltd

The answers can be found in views of The Apex Court in M/s. Bishwanath Prasad Radhey
Shyam v. Hindustan Metal Industries3 , while dealing with the meaning of the words 'inventive
step' court held as follows: It is important to bear in mind that in order to be patentable an
improvement on something known before or a combination of different matters already known,
should be something more than a mere workshop improvement; and must independently satisfy
the test of invention or an "inventive step". To be patentable the improvement or the combination
must produce a new result or a new article or a better or cheaper article than before. The
combination of old known integers may be so combined that by their working inter-relation they
produce a new process or improved result. Mere collection of more than one integers or things,
not involving the exercise of any inventive faculty, does not qualify for the grant of a patent.

The device being manufactured by the plaintiffs is basically a Kilta but made out of synthetic
polymeric material which is commonly known as plastic. The process of making traditional
items out of such polymers is a well known and well established process. This Court should take
notice of the fact that much prior to the device being manufactured by the plaintiffs, traditional
items made out of woods, steel, brass, leather and other natural materials have been replaced by
plastic. In this regard reference may be made to chairs, tables, Jugs, baskets, shoes and numerous
other items which were traditionally made of natural material but are now made of plastic.

Therefore, the mere fact that the device is made of polymeric material instead of bamboo is not
an inventive step involving any novelty. There is nothing new about the process of
manufacturing the traditional Kilta made of natural material from synthetic material. Even nylon
straps now added are virtually copies of the ropes used in the traditional Kilta. The ropes in the
Kilta can also be adjusted by the user keeping in view the height of the person using the Kilta
and the weight being carried by him. The mere introduction of buckles would not amount to a
new device being called an invention or an inventive step.

Thus as the argument advanced above it can be concluded that the product of the plaintiff is not
an invention according to the provisions given in Patent act,1970, so in the light of Section 64
1(d) patent granted in favor of the plaintiff should be revoked.

3
AIR 1982 SC 1444

12 | P a g e
 Dhanpat Seth And Ors. v. Nil Kamal Plastic Crates Ltd

(B) Patent granted to applicant is liable to be revoked.

As already given reasons regarding to invention as to why the patent granted to applicant was
erroneous there is another ground to challenge the patent of applicant. That the defendant had
anticipated the device in fact in December, 2001. It designed a similar Kilta and sent
drawings of the same design to Arries Moulding Company Ltd., Taiwan in order to get it
manufactured and thereafter the production of the Kilta was started and the same was
introduced in the market.

As already established by the fact mentioned in the case Plaintiffs applied for grant of patent
on 24-5-2002. The patent was granted in their favor on 11-7-2005 but it will relate back to
the date of application i.e. 24-5-2002, which is still later than the anticipation of device of Nil
kamal plastic crates which they sent (Design) to Arries Moulding Company Ltd, Taiwan.

The present situation gives ground to Defendants (Nil Kamal Plastic Crates Ltd.) to appeal
the revocation of the patent granted to applicants. Section 64 1(e) of the Patents act,1970
gives right.

According to section 64 1(e) - Subject to the provisions contained in this Act, a patent,
whether granted before or after the commencement of this Act, may, be revoked on a petition
of any person interested or of the Central Government by the Appellate Board or on a
counter-claim in a suit for infringement of the patent by the High Court on any of the
following grounds, that is to say that the invention so far as claimed in any claim of the
complete specification is not new, having regard to what was publicly known or publicly
used in India before the priority date of the claim or to what was published in India or
elsewhere in any of the, documents referred to in section 13.

This section is meant for protecting the interests of prior users of the invention claimed. A
person who is already manufacturing a thing, or has previously manufactured it, and has put
it into use is not to be stopped from doing what he has done before. Patents are not to be
issued to an inventor if the result would be to stop a prior user from continuing his use. It

13 | P a g e
 Dhanpat Seth And Ors. v. Nil Kamal Plastic Crates Ltd

may be that the prior user (who has manufactured the thing previously) did so in complete
ignorance of the scientific phenomenon involved.

Lord Denning in the case of R v. Patents appeal tribunal ex parte Beecham Group Ltd.4
Observed that-He may not have had the least idea of the chemical properties of the
ingredients. He may have manufactured the thing simply by chance, and then found out that
it had particular advantages, or was useful for particular purposes. Later on, some other
person may quite independently invent a process for manufacturing the very same thing. He
may find that it has other special advantages, or can be put to other extra purposes. Yet that
discovery does not entitle him to stop the prior user from continuing to manufacture it. He
cannot get a patent for the product; so as to stop the prior user from doing what he did before.
The test is: If this patent were granted, would it stop the prior user from doing what he was
doing before?

The notion behind anticipation is that it would be wrong to prevent a man from doing what
he has lawfully done before the patent was granted.5 Clear guidelines for the determination of
this question can be gathered from the authorities. The exercise is essentially one of
comparison between the claims made by the patentee and prior publication in order to see
whether the information imparted in the prior document is equal in practical utility to that
imparted in the patentees claims.

The process of comparison can be broken down:

(1) The first step is to construe the prior document as at the date of its publication, in
accordance with the normal principles of construction, taking account of surrounding
circumstances, but excluding subsequent documents, information and events, in short,
excluding the benefit of hind sight,

(2) The next step is to compare the disclosure in each prior document separately with the
disclosure in the patentees claim, construed in accordance with the principles set out earlier.

4
(1973)I All ER 627
5
J. Oliver in the case of Windsurfing v Tabur [1985] RPC 59 at 77

14 | P a g e
 Dhanpat Seth And Ors. v. Nil Kamal Plastic Crates Ltd

(3) The final step is to ask whether, on making the comparison, the prior document discloses
the same invention as that disclosed in the patentees claim. The patentees claim has been
anticipated if the clear and unmistakable directions in the prior publication, when carried
out by the skilled workmen would inevitably result (not simply might result) to something
being made or done which, if the patentees claims were valid, would constitute an
infringement.

In the present case none of the steps were taken by the appropriate authorities while granting
the patent to applicant, authorities firstly just ignored the fact that said product was clear
imitation of Kilta, which has been used by public from the time immemorial, and secondly
the Nil Kamal Plastic Crates were already producing these kind of products and the products
were amply available in the market.

US Court in the case of General Tire Rubber Co. v Fire Stone Tire and Rubber Co. Ltd. 6 held
the view that for a claim to be anticipated, the prior disclosure must contain a clear
description of something or clear and unambiguous directions to do or make something that
would infringe the claim if carried out after the grant of the patent. Where something within
the claim had been disclosed it did not matter that the disclosure was less preferred.

Thus by the argument advanced as above in order to prove that the patent granted to
applicant are liable to be revoked.

Hence the patent which is liable to revoked cannot be made basis that the defendants has
infringed this, we pray to Honble High Court to save the interest of defendents and revoke
the grant of patent which is erroneously given to applicant.

6
[1972] RPC 457 at 485-486 (CA)

15 | P a g e
 Dhanpat Seth And Ors. v. Nil Kamal Plastic Crates Ltd

PRAYER FOR RELIEF

In light of the facts of the case, issues raised, authorities cited and arguments advanced, the
Counsel on behalf of respondent humbly prays to the Honble High Court to:

1. To revoke Patent granted to applicant.

2. Uphold the decision of single judge of this Honble High Court.

The Court may also be pleased to pass any other order, which the Court may deem fit in light of
justice equity and good conscience.

All of which is most humbly submitted before the Honble High Court

Date- 04/04/2016

Counsel on behalf of Respondent

Gaurav Khetpal

16 | P a g e