RAJ PRAKASH VS.

MANGAT RAM CHOWDHRY & ORS: A CASE ANALYSIS

I. INTRODUCTION

The case of Raj Prakash vs. Mangat Ram Chowdhry & Ors 1 is a landmark case as it serves as
an important source of literature in the development of Indian jurisprudence of the
intellectual property, specifically patents. It deals with several aspects of patent law such as
that of infringement, qualifications of an invention, pith and marrow test and also finds the
mention of Doctrine of Essentials for the first time in Indian IP case laws. Although the latter
is disputed, the author has attempted to understand the various issues dealt by the Court in
this case. In the part II of the analysis, the author has given a brief summary of the case and in
the part III has studied the application of law as held by the Court in this case and finally, in
the part IV, the author has critically analysed the judgment of the Delhi High Court.

II. BRIEF ABOUT THE CASE

Facts: The plaintiff is a manufacturer of a toy called Viewer. It uses a 35 mm medially cut
positive film on which images are printed and can be viewed through a lens. The petitioner
holds a patent for the same. The toy was attractive to both children and adults to view
interesting and educative pictures. It is the petitioner’s case that the respondents have
infringed the patent by manufacturing and selling by producing similar and identical viewers
and selling them in the market. The allegations have been denied by the defendants by
claiming that the plaintiff had not developed any such process which shall qualify as an
‘invention’.

The invention moves films of 35 mm and the principal object is to the economics in the
quantity of film used, as it is cut-down to about half. Further, the film generally used in the
viewers is imported, which increases the cost. The plaintiff has devised a method by which
the standard size film of 35 mm with perforations can be cut into half such that 2 pictures of
equal size appear in the movie frame. The plaintiff has claimed patent over the process and
not the product itself (claimed being rejected by the single-judge bench).

Procedural History: The present case is a first appeal before a 2-judge bench of Delhi High
Court directed against the judgment delivered by a single judge bench having original

1
[AIR 1978 Delhi 1]
jurisdiction. The appeal first came before another 2-judge bench which framed an additional
question and remanded the case back to the single-judge. The patent was partly upheld but
the claim of infringement was rejected. The matter thereafter came before the present bench.

Issues:

1. Whether the plaintiff is the true and first inventor of the alleged invention?
2. Whether the patent is liable to be revoked?

Rule:

Electrical & Musical Industries Ltd vs. Lisson Ld & Anr 1937 (54) R.P.C. 307(1): In patent
actions concerning the validity, the first thing to do essentially is proper construction of the
specification with proper appreciation of meaning that it would convey to persons engaged in
the art to which it relates.

Reference to Statement of Objects & Reasons of the Patent Act vis-à-vis the Rights of the
Patentee.

Contentions on Behalf of Appellant:

1. The plaintiff is in possession of an invention and he is the first and true inventor thereof
and that the same was not in use in India by any other person when the patent was
claimed.
2. The patent has claimed in his statements that the claim is not in the process of exposing
film or printing positive fil. The patent is in fact granted to him in a medially cut positive
35 mm film and its use in combination with viewers to obtain virtual image.

Contentions on Behalf of Defendant:

1. The defendants are not manufacturers of the viewer and not the manufacturer.
2. The film is being manufactured and used by them for the past 5 years – before the patent
was granted to the plaintiff.
3. Filed a counter-claim for the revocation of the patent alleging that the plaintiff is not the
true and first inventor.
4. That the patent had no utility and was obtained by fraud.
III. APPLICATION

The Court observed that Invention is to find out something that has not been discovered by
anyone else before. In order to determine whether the patent sets out as an invention, a true
and fair construction of the specifications is to be done. Further, While in the general course
of affairs, the ordinary meaning to the words should be attached to construe the patent claims,
but where necessary it should be used in a particular sense used in the concerned trade/sphere
in which invention is made.

The Court also referred to several authorities to hold that it is the pith and marrow of the
invention claimed that has to be looked into and not get bogged down by the detailed
specifications or claims made by the party. It is not essential that the invention should be
something complicated, but it is essential that the patent-holder was the first one to adopt it.

After referring to the patent specifications of the plaintiff, the Court observed that a
misleading title shall be of little consequence. The patent has to be construed on the basis of
true nature and specifications. The essential part of the specification, has to be read carefully,
provided that the invention is novel, without giving importance to the unessential parts,
which might be well-known. The patented product may contain non-novel or well-known
parts or techniques. However, as the statement of counsel for appellant signifies, the patent is
valid, on studying by separating the essential and non-essential features.

Additionally, the defendants could not disclose any prior publications. In order to prove it,
there should be some prior publication where the information is found. Mere possibility of
such a publication is of no consequence. Lastly, the effect of grant of patent is quid pro quo,
quid being the knowledge disclosed to the public and quo is the monopoly granted for the
patent.

IV. CONCLUSION

The judgment shows the emphasis that the Courts have laid on the purposive interpretation of
the patent claims and thereby extended the scope of claims beyond the literal interpretation.
Further, the reference to the pith and marrow test shows the general tendency of the Courts to
favour the patent holder. However, at the same time, the patent must be carefully drafted and
the substance of the claim should be communicated clearly. At the same time, this does not
imply that the claim over minor modifications or additions shall sustain for a grant of patent.

Another point of analysis is the reference to equivalence that is made in the impugned
judgment. It is often argued that the mere reference to equivalent does not qualify for the
Doctrine of Equivalence.2 It is the emphasis on Pith and Marrow test as per the UK regime
instead of Doctrine of Equivalence that was aimed by the Court in this case. However, while
the pith and marrow test pertain to focussing on the “crux” of the claim, the latter emphasizes
on giving the author the liberty to extend the claim of patent. The author is personally of the
opinion that after understanding the broad literature of both the principles, the present case
falls in the purview of former more than the latter. However, it is also the case that the said
case an act as an aid in substantiating the application of doctrine of Equivalence.

In its final order, the Hon’ble Delhi High Court held that pursuant to Section 151 of the
Patents Act, 1970, the plaintiff successfully proved particulars of the breaches and the
defendant failed to satisfy the claim of revocation.

2
Prof. Shamnad Basheer, Guest Post: Professor Sarnoff Warns India about the Doctrine of Equivalents
https://spicyip.com/2008/11/guest-post-professor-sarnoff-warns.html [last visited 10-04-20].