Amendment of claims in infringement Suit whether permissible without amending the plaint
Author: Sudhir Kumar
In Re: Glaverbel S.A. vs Dave Rose & Ors., Justice A. K. Pathak, Delhi High Court rejects IA seeking amendment in claims as allowed in another suit without amending the present suit. The Court also relied on certified copy of Patent Office wherein the amendment sought in claim did not reflect.
Here the Plaintiff vide an interlocutory Application 12535/2011 (under Section 151 of CPC)sought the amendment in present suit (CS (OS) no. 594/2007 of independent claim 1 as allowed in CS (OS) no. 593/2007.
The originally allowed claim under Patent No. 190380 read as under
A Mirror with no copper layer comprising:
i) a vitreous substance,
ii) at least one material selected from the group consisting of bismuth, chromium, gold, indium, nickel, palladium, platinum, rhodium, ruthenium, titanium, vanadium and zinc at the surface of the said substrate,
iii) a silver coating layer on the surface of the said substrate, said silver layer optionally comprising at least one material selected from the group consisting of tin, chromium, vanadium, titanium, iron, indium, copper, and aluminum present at the surface of the silver coating layer and/or traces of silane; and
iv) at least one paint layer covering said silver coating layer."
Plaintiff had filed CS(OS) No. 593/2007, against one Shri Anand Mahajan for permanent injunction praying therein that the defendant be restrained from infringing the Indian Patent No. 190380 of the plaintiff as also for rendition of accounts. In the said case, plaintiff also filed an application under Sections 57 and 58 of the Patents Act read with Section 151 CPC being IA No. 13519/2007 seeking amendment in the Claim No. 1. By way of amendment, plaintiff sought to insert "a sensitizing material, typically tin, and" at the beginning of clause (ii) of Claim No. 1. After the proposed amendment clause (ii) of Claim No. 1 reads as under:-
"(ii) a sensitizing material, typically tin, and at least one material selected from the group consisting of bismuth, chromium, gold, indium, nickel, palladium, platinum, rhodium, ruthenium, titanium, vanadium and zinc at the surface of the said substrate,"
A Single Judge of this Court vide order dated 10th September, 2009 reported in 2009 (41) PTC 207 (Del.) titled AGC Flat Glass Europe SA vs. Anand Mahajan and Ors. disposed of said application whereby allowed the aforementioned amendment. The operative portion of the order reads as under:-
"25. In view of the aforementioned discussion and well settled position of law and bearing the facts of the present case in mind, I find that the present amendment is merely a clarificatory/ elaborative one and does not alter the scope of the invention.
At best, even if the defendants' objections are accepted, the said amendment appears to be a disclaimer which also cannot come in the way of permitting the amendment and in fact, the same rather support the amendment. The merits of the controversy as to whether it is disclaimer or clarification will be decided at a later stage. The amendment is thus allowed as being a clarificatory one and the same does not attract the proviso of Sections 58 and 59 of the Patent Act, 1970."
It was contended by Plaintiff that the amendment in claim no. 1, as allowed vide order dated 10th September, 2009 passed in CS (OS) No. 593/2007, is clarificatory in nature and does not alter the scope of invention. Claim nos. 9 and 10 of the same patent specifically mention about sensitization of the mirror by tin chloride. This fact was taken note of by the Single Judge while allowing the amendment. Clerical correction of claim no. 1 does not change the nature of the claim no. 1. Besides this, order of amendment is "in rem" and has attained finality and can be read in this case without amending the pleadings of this case. Correctness or incorrectness of the order dated 10th September, 2009 cannot be gone into in this case. Amended claim no. 1, in terms of order dated 10th September, 2009, can be read in all other proceedings without amending the pleadings in other cases. Defendants have understood the claim no. 1 as a copper free mirrors in which first step is sensitization with tin chloride. This is evident from the averments made in para nos. 17, 18 and 19 of the written statement. Defendants in their written statement, have taken a plea that a patent claim "sensitization by tin chloride" is not new, therefore, the patent is invalid. Defendants have also cited prior art like "Franz", "Shipley", "Orban" and "Buckwalter" in para 18 of the written statement and have stated that "sensitization by tin chloride" is an old concept. Thus, no formal amendment of pleading in respect of claim No.1 is required in this case. Defendants are not prejudiced in this case even if amended claim No.1, as contained in the order dated 10th September, 2005 is read in this case. It was further contended that the whole purpose of opposing the present application by the defendants is to seek de novo trial. In other words, defendants will seek time to file amended written statement and recall of the Plaintiff's witnesses for further cross examination. This will not do any good to anyone except that final adjudication will get delayed. In nutshell, contention of plaintiff was that there is no need to amend the plaint. It was further contended that plaint is not required to be amended if not necessary. According to him existing pleadings are sufficient to indicate that defendant has understood the claim of plaintiff regarding sensitization by tin of the mirror manufactured by it. Subsequent event of amendment in claim No.1 can be taken note of in this case without amending the pleadings of this case.
The Defendant contended that the plaintiff is seeking amendment in claim no. 1 without amending the plaint, which is not permissible under the law. It was further contended that in the order dated 10th September, 2009 it has been categorically mentioned that the amendment does not attract the provisions of Sections 58 and 59 of the Patents Act; meaning thereby amendment in claim no. 1 was not allowed under the said provisions of Patents Act. Accordingly, amendment can be read only in CS(OS) No.593/2007 and not in other proceedings. Amendment in claim no. 1 permitted by the Court was not recorded in the Patent Office. Certified copy of the Patent Ex.PW1/3 has been issued by the Patent Office in the month of March, 2009, which does not contain amended claim no.1. This indicates that amendment was not allowed under Sections 58 and 59 of the Patents Act. Amendment could at best be read as an amendment of claim No.1 in that particular suit and not in patent records. It was further submitted that plaintiff has to amend claim no. 1 in this case and for the said purpose he has to file appropriate application under Order 6 Rule 17 CPC seeking amendment in claim no.1 which application is, otherwise, not permissible in this case as the trial has already commenced, inasmuch as, plaintiff's witnesses have already been cross- examined. The only contention acceptable under the law is that a plaint can be amended after the start of trial when the plaintiff had exercised due diligence and in spite of that he could not seek the amendment earlier. In the instance case, plaintiff was well aware of the order dated 10th September, 2009; whereas plaintiff's evidence was concluded in this case on 21st July, 2011, much thereafter. In any case even if such an amendment is permitted in the present suit the defendants have to respond to such amendment by filing amended written statement, inasmuch as, have to cross examine the Plaintiff's witnesses on this point. It was further contended that the plaintiff cannot be allowed to bring on record the amended claim no. 1 in this case indirectly so as to prejudice the defendants. Under the Patents law a patent can be obtained either in a product and/or in a process. Claims Nos.1 to 8 in the suit reflect product patents; whereas claim Nos. 9 to 20 are the process patent. By adding tin in the product claim no. 1, the plaintiff is trying to expand its monopoly even in a product having layer of tin by way of such amendment, which is not permissible under the law.
After considering the contentions of both the parties, the Court was unable to persuade itself to accept the contention of the plaintiff that the amendment in claim no. 1, as permitted in CS (OS) No. 593/2007, can be read in this case without amending the pleadings of this case. Court observed that it is well settled that a case is decided on the facts involved therein as are emerging from the pleadings duly proved by the evidence adduced in support thereof. No judicial notice of the facts emerging from the pleadings and the evidence led in some other case can be taken for deciding the controversy between the parties in a different case. It is the fact pleaded and the evidence led in that particular case alone which has to be considered. Judicial pronouncements can be referred to at the bar in support of a legal preposition but the facts involved therein cannot be read as the facts of such cases where such reports are referred. Subsequent events can be considered only if the same are brought on record by seeking necessary amendment in the pleadings and not by noticing the same from the facts emerging from the pleadings and the documents of other cases, which may have been referred to in the reports. Even though plaintiff is at liberty to refer and rely on the order dated 10th September, 2009 passed in CS (OS) No. 593/2007 in support of law laid down therein but the fact remains that the amended claim no. 1 cannot be read in this case. Judgment has to be pronounced in this case on the pleadings and the evidence adduced i.e. either documentary or ocular, in this case. It appears that plaintiff was conscious of this fact and for this reason only plaintiff had expressed its desire to amend the plaint initially, as is evident from the perusal of order dated 5th February, 2010. However, subsequently, on 3rd May, 2010 Plaintiff made a statement that he does not intend to file any application for amendment. Consequently, issues were framed. Merely because amendment of the pleading would result in delay in disposal of the suit by itself cannot be made a ground to adopt a shortcut by reading the amended claim No.1 as permitted in CS (OS) No. 593/2007 in the present case, without amending the pleadings. Plaintiff cannot be permitted to achieve its objective of amending the claim no. 1 in this case indirectly.
If the matter is viewed from another angle then also the course adopted by the plaintiff cannot be permitted. Amendment in claim no. 1 as allowed in CS (OS) No. 593/2007 has yet not been recorded by the Patent Office in its record. Certified copy of patent, issued by the Patent Office after more than 6 months of the order dated 10th September, 2009, contains un-amended claim no.1. It is this certificate which has been placed on record in this case and has been proved. Plaint also contains un-amended claim. Evidence led by the parties, which is in consonance with the pleadings of the parties, alone can be read at the stage of final adjudication of the matter. There is no gain saying in reiterating that evidence led beyond the pleadings cannot be looked into. Accordingly, the amended claim no. 1 cannot be read in this case without plaintiff taking necessary steps to get the claim amended in this case as well.
For the foregoing reasons, the Court held that plaintiff though can refer the order dated 10th September, 2009 passed in CS (OS) No. 593/2007 at the time of hearing but same cannot be permitted to be taken on record as a document so as to read the amended claim No.1, in this case. Amendment in claim no. 1, as permitted in CS (OS) No. 593/2007, cannot be read as amended claim No.1 in this case. As regards permission to the plaintiff for placing on record certified copy of amended patent no. 190380 as and when received from the Patent Office, the same also cannot be granted at this stage. However, plaintiff is at liberty to file appropriate application as and when he receives the certified copy from the Patent Office.
Accordingly application was disposed of in the above terms. Therefore Along with I.A. No. 13631/2011 (u/Sec. 151 CPC) by Defendants) became infructuous and was disposed of as such.
About the Author
Author is an Advocate and Patent and Trademark Attorney with Aswal Associates, Attorneys at law & Intellectual property, New Delhi, India and can be reached at firstname.lastname@example.org. Author is a member of APAA, Delhi Bar Council, Delhi High Court Bar Association and Supreme Court Bar Association.