Patent revocation and infringement claims fail where obviousness, section 3(d) bar, and claim scope are not proved on evidence.
The court addressed patent revocation and infringement issues under the Patents Act, holding that obviousness requires proof of technical advance and non-obviousness on a balance of probabilities, and rejecting the challenge where the factual chain for obviousness was not established. It also held that section 3(d) was not attracted because the defendant did not prove the patent was merely a new form of a known substance without enhanced efficacy. A disclosure lapse under section 8 was found, but revocation was declined in discretion. On infringement, purposive construction and the Catnic approach led the court to find that the defendant's polymorphic variant was not proved to fall within the claim, so injunction and damages were refused.
Issues: (i) whether the suit patent was liable to be revoked for lack of inventive step and obviousness under the Patents Act, (ii) whether the patent was hit by the prohibition against new forms of known substances under section 3(d), (iii) whether the patent was liable to revocation for non-disclosure of foreign applications under section 8 and for concealment or false representation, and (iv) whether the defendant's product infringed the suit patent and entitled the plaintiffs to injunction and damages.
Issue (i): Whether the suit patent was liable to be revoked for lack of inventive step and obviousness under the Patents Act.
Analysis: The Court held that inventive step under section 2(1)(ja) requires technical advance and non-obviousness to a person skilled in the art. Applying the balance of probabilities, it found that the defendant did not establish the necessary factual chain for obviousness, including that the selected prior art range was arbitrary, that the claimed compound was not far removed from the prior art, and that the substitution was a mere workshop result. Structural similarity alone and hindsight-based reconstruction were held insufficient.
Conclusion: The challenge on the ground of lack of inventive step failed and the revocation plea on this ground was rejected.
Issue (ii): Whether the patent was hit by the prohibition against new forms of known substances under section 3(d).
Analysis: The Court held that section 3(d) requires proof that a new form of a known substance does not show enhanced efficacy. It found that the defendant did not prove that the suit patent was merely a new form of an already known substance, and the evidence of efficacy and the distinct chemical position of the claimed compound was treated as sufficient to keep the patent outside section 3(d).
Conclusion: The patent was not held to be barred by section 3(d) and this ground of revocation failed.
Issue (iii): Whether the patent was liable to revocation for non-disclosure of foreign applications under section 8 and for concealment or false representation.
Analysis: The Court found that the plaintiffs failed to disclose the later foreign application concerning the corresponding polymorphic form, and that this non-disclosure attracted section 64(1)(m). However, on the larger allegation of concealment, false representation, and defective examination, the Court found the defendant did not prove the broader accusations and upheld the patent office process substantially. Despite the section 8 lapse, the Court exercised its discretion not to revoke the patent.
Conclusion: The section 8 violation was found, but revocation was declined in the exercise of discretion; the broader concealment and misrepresentation challenge failed.
Issue (iv): Whether the defendant's product infringed the suit patent and entitled the plaintiffs to injunction and damages.
Analysis: Applying purposive construction and the Catnic approach, the Court held that the plaintiffs did not prove by positive evidence that the defendant's product fell within the scope of the suit claim. The Court accepted that the marketed product corresponded to a polymorphic B form, and found that the plaintiffs failed to establish that the alleged variant was intended to be covered by the suit patent or that the variant was immaterial to the working of the invention. On that footing, the claim for injunction and damages also failed.
Conclusion: The infringement claim failed, and the requests for permanent injunction and damages were rejected.
Final Conclusion: The suit and the counterclaim were both dismissed after the Court rejected the revocation case on the substantive grounds relied upon, found a section 8 disclosure lapse but refused revocation in discretion, and held that infringement was not proved.
Ratio Decidendi: In a patent revocation and infringement dispute, obviousness and infringement must be proved by positive evidence on a balance of probabilities, and where the allegedly infringing product contains a material variant or polymorphic form, the patentee must establish by evidence that the variant was intended to fall within the claim and does not materially alter the working of the invention.
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