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1968 SCC OnLine Bom 118 : (1974) 76 Bom LR 130 : AIR 1969 Bom 255
Bombay High Court

(BEFORE VIMADALAL, J.)
Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius &

Bruning, A Corporation
Versus
Unichem Laboratories*
O.C.J. Suit No. 132 of 1962
Decided on July 11, 1968
Page: 133
The Judgment of the Court was delivered by

VIMADALAL, J.:— This is a suit for infringement of patent under s. 29 of the Indian
Patents and Designs Act, 1911, filed by the plaintiffs who are the legal owners and
proprietors of Indian Patent No. 58716 in respect of the manufacture of new sulphonyl
-ureas, salts of those compounds and of anti-diabetic preparations containing such
compounds. The application for the said patent was made by the plaintiffs on October
23, 1956 and was accepted on November 7, 1957, but the same took effect from May
8, 1956 by reason of the provisions of s. 78A of the Patents and Designs Act. One of
the chemical compounds comprised in the said patent is Tolbutamide, and since 1957
the plaintiffs have been marketing the same as an anti-diabetic drug in India and all
over the world under the trade mark “Rastinon”. The suit was originally filed only
against the present defendants No. 1 who, according to the plaintiffs, have since May
1961 wrongfully and with full knowledge of the Plaintiffs' said patent No. 58716
infringed the said patent by manufacturing, preparing and selling Uni-Tolbid tablets or
Tolbutamide manufactured in accordance with and by the use of the invention
disclosed in the Plaintiffs' said patent “and claimed in Claims 1 and 11” thereof.
Defendants No. 1 admit having manufactured or sold the said tablets under the name
Uni-Tolbid or Tolbutamide but claim that the said tablets had been manufactured by
the application of the processes mentioned in another patent, being patent No. 64323
Page: 134
held by the Haffkine Institute of Bombay which is owned by the present defendants
No. 2 State, under a licence granted to them by defendants No. 2 for the manufacture
and sale thereof. Defendants No. 2 have, by an order dated February 6, 1967, been
made party-defendants to this suit on their own application at their own costs
throughout, but it may be mentioned that no relief has been claimed against them in
the present suit by way of amendment of the plaint after their joinder. It appears that
the business of defendants No. 1 has, since the filing of the present suit, been
acquired and taken over as a going concern by defendants No. 3 being a company
which was registered under the Companies Act on August 22, 1962, and defendants
No. 3 have been manufacturing and selling Uni-Tolbid tablets or Tolbutamide ever
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since then as successors to defendants No. 1. Defendants No. 3 were, therefore, joined
as party-defendants to this suit by an order dated January 9, 1968, and by the
amendments effected pursuant to the said order, the plaintiffs have claimed against
defendants No. 3 also the same substantive reliefs which they had claimed against
defendants No. 1 in the suit as orignially filed. The reliefs claimed by the plaintiffs in
the present suit against defendants Nos. 1 and 3 are, an injunction restraining them
from infringing the Plaintiffs' said patent No. 58716, an order for payment of a sum of
Rs. 7,000 as and by way of damages, or in the alternative, an order for an account of
the profits made by defendants Nos. 1 and 3 from the sale of the infringing goods and
for payment of the same to the plaintiffs, and also for an order to deliver up to the
plaintiffs for destruction all articles in the possession of defendants Nos. 1 and 3 made
in infringement of the Plaintiffs' said patent.
2. On merits, the defence of defendants No. 1 as disclosed by their Written

Statement falls into two parts. First, that there is no infringement of the Plaintiffs' said
patent as they have not manufactured and prepared Uni-Tolbid tablets in accordance
with or by the use of the invention disclosed in the Plaintiffs' said patent, but have
manufactured the compound Tolbutamide in accordance with a different process
described in defendants No. 2's patent No. 64323 for the preparation of substituted
benzenesulphonylureas from the corresponding substituted benzenesulphonylthioureas
by desulphurisation with hydrogen peroxide; secondly that the Plaintiffs' said patent
No. 58716 is invalid and is liable to be revoked on the grounds of insufficiency of
description, lack of novelty, want of inventive step and lack of utility, grounds which
the defendants would, under s. 29(2) read with s. 26 of the Patents and Designs Act,
be entitled to urge by way of defence to a suit for infringement like the present one. In
addition to these two defences on the merits, defendants No. 1 have pleaded the
defences of acquiescence, estoppel and delay disentitling the plaintiffs to any relief, by
reason of the failure of the plaintiffs to take action till April 4, 1962 when the present
suit was filed. Defendants No. 3 who, as I have already stated earlier, are successors
to the business of defendants No. 1, have by their Written Statement adopted
defendants No. 1's Written Statement. Defendants No. 2 have filed a separate and
detailed Written Statement in answer to the Plaintiffs' suit, but they have also, in
substance, adopted the same defences as are to be found in the Written Statement of
defendants No. 1. On these pleadings, the following issues were framed by me:
1. Whether the manufacture of Uni-Tolbid tablets or Tolbutamide by defendants
Nos. 1 and 3 is carried out by using the processes mentioned in the Plaintiffs'
patent No. 58716 as alleged in para 6 of the plaint.
2. Whether defendants Nos. 1 and 3 have been infringing and are infringing the
Plaintiffs' said patent No. 58716 as alleged in para 8 of the plaint
3. Whether the Plaintiffs' said patent No. 58716 is invalid and is liable to be revoked
on the grounds stated in paras 5 and 6 of the Written Statement of defendant
No. 1 and paras 7 and 8 of the Written Statement of the second defendant.
Page: 135
4. Whether there has been acquiescence on the part of the plaintiffs in respect of
the manufacture of Uni-Tolbid tablets and Tolbutamide by defendants Nos. 1 and
3 as alleged in para 7 of the Written Statement of defendant No. 1, and para 9 of
the Written Statement of defendant No. 2.
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5. Whether the plaintiffs are precluded and/or estopped from complaining of the
infringement, if any, of the said patent No. 58716 as alleged in para 7 of the
Written Statement of defendant No. 1, and para 9 of the Written Statement of
defendant No. 2.
6. Whether the plaintiffs are not entitled to the relief for injunction and damages or
an account of profits in the facts and circumstances and having regard to the
Plaintiffs' conduct set out in para 7 of the Written Statement of defendant No. 1.
7. To what relief, if any, are the plaintiffs entitled?
3. After evidence on behalf of the plaintiffs had been led and the Plaintiffs' case
closed by Mr. Blanco White, while opening the case of the defendants, Mr. Mistree
stated that he proposed to examine three or four witnesses. After the examination of
his first witness Dr. Krishnamurthi Ganapathi was concluded, Mr. Mistree, however,
suddenly decided upon a change of strategy and closed his client's case, probably
because he realized that his trump card had not yielded a trick. At the very
commencement of his address, Mr. Mistree then stated that he accepted the evidence
of Dr. Aumuller and Dr. Bander, and did not quarrel with the evidence of Dr. Lingnau.
Mr. Mistree conceded that the evidence of Dr. Krishnamurthi Ganapathi who was
examined as an expert by him on behalf of the defendants did not carry his client's
case any further. When Mr. Mistree resumed his address on the next day, however, he
did try to defend, to some extent, the evidence led by Dr. Krishnamurthi Ganapathi.
The evidence of Dr. Krishnamurthi Ganapathi being of no assistance to the defence, as
Mr. Mistree has himself conceded, I do not propose to deal with the same in the course
of this judgment. I am, however, constrained to say that Dr. Krishnamurthi
Ganapathi's evidence did not impress me at all. The record of his evidence on paper,
does not perhaps convey the halting and shaky manner in which he gave that
evidence. In contrast with the evidence of Dr. Krishnamurthi Ganapathi, it may be
stated that. I was considerably impressed by the cogent and confident as well as frank
manner in which Dr. Aumuller and Dr. Bander gave evidence on behalf of the plaintiffs,
and indeed, Mr. Mistree was unable to shake the evidence of either of those witnesses
in the course of cross-examination. With these general observations, I will now
proceed to deal with the issues framed by me.
4. Before dealing with the questions that arise in the present suit on the merits, it
would be convenient to dispose of issues Nos. 4, 5 and 6 relating to acquiescence,
estoppel and delay. It may be mentioned that according to the defendants the delay in
the present case is a delay of about two years after the Plaintiffs' letter dated March 7,
1960 to defendants No. 1, the present suit having been filed on April 4, 1962.
According to the plaintiffs, however, they could not be expeeted to take any action till
they came to know in or about May 1961 that defendants No. 1 had placed on the
market goods manufactured in infringement of their patent, as recorded in their
attorney's letter dated May 31, 1961. Mr. Blanco White for the plaintiffs argued that
mere delay is no bar, except to relief by way of interlocutory injunction, and that in
order to disentitle the plaintiffs to a perpetual injunction at the hearing of an
infringement action, there must be something more than mere delay. Quoting from
the judgment of Harman L.J. in the case of Van der Lely (C.) N.V. v. Bamfords Ltd.1 it
is stated in Terrell on the Law of Patents, (11th edn.), p. 363, para 940,
“…laches, while a bar to the obtaining of an interlocutory order, would not bar the
right to a perpetual injunction as ‘there must be more than mere delay to disentitle
a man to his legal rights’.”
Page: 136
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5. In support of his argument Mr. Blanco White has relied on the observation in the
case of Proctor v. Bennis2 . Cotton L.J. negativing the plea of laches stated in his
judgment in the said case (at pp. 355-356) that the Court does not interfere on
interlocutory injunction unless the plaintiff has been prompt, but there was no
question of interlocutory injunction in the case before him which was at the stage of
the hearing of the action. Bowen L.J. in the course of his judgment in the same case
(at p. 358) observed that in order to make out acquiescence which precluded the
plaintiff from raising the question of the validity of the patent and the question of
infringement of it by the defendants, it was necessary that the defendants should
establish that the plaintiff stood by and knowingly allowed the defendants to proceed
and expend money in ignorance of the fact that he had rights, and meant to assert
such rights. In the case of Vidal Byes Syndicate Ld. v. Levinstein Ld.3 which was also
cited by Mr. Blanco White, it has been stated by Fletcher Moulton L.J. in the judgment
(at p. 259) to be settled law that a patentee need not attempt to stop an infringement
when he first learns of it, but the greater the interval between the granting of the
patent and the trial of the action, the more carefully must the evidence be looked into
lest the Court be induced to take an erroneous view, either on the one side or the
other, of the knowledge of the world at the critical date. In the later case Electrolux Ld.
v. Electrix Ld.4 Jenkins L.J., dealing with the question of delay, observed (at p. 40)
that the defendants were not entitled to assume that the plaintiffs accorded them their
consent to the infringement merely because the plaintiffs, knowing of the defendant's
use of “Electrix”, did nothing to enforce their right, and that if the defendants adopted
the said mark on that assumption and without proper inquiry, they did so at their own
risk. The position, therefore, is that mere delay is no bar to the granting of relief by
way of perpetual injunction at the hearing of the suit, unless there is something more
than mere delay which has caused prejudice to the defendants. There is no averment
to that effect in the pleadings in the present suit, and certainly no evidence
whatsoever to prove that the defendants were prejudiced in any manner by the
alleged inaction of the plaintiffs over a considerable period of time. That is the position
in regard to the plea of acquiescence as well as estoppel, and delay as a factor
disentitling the plaintiffs to relief. Issues Nos. 4, 5 and 6 must, therefore, be answered
in favour of the plaintiffs.
6. As stated by B.J. Wadia, J. in the case of Lallubhai Chakubhai v. Chimanlal
Chunilal & Co.5 , the question of infringement is a mixed question of law and fact.
Section 3(3) of the Indian Patents and Designs Act, 1911, lays down that an
application for a patent must contain a declaration to the effect that the applicant is in
possession of an “invention”. Section 2(8) of that Act defines “invention” as meaning
any manner of manufacture and as including an improvement. Section 2(10) of the
said Act defines the term “manufacture” as including any art. process or manner of
producing, preparing or making an article, and also any article prepared or produced
by manufacture. Section 26 of the Act lays down the grounds on which a patent can
be revoked. Section 29(1) provides that a patentee can file a suit in the nature of an
infringement action against any person who, during the continuance of the patent,
makes, sells or uses the invention without his licence, or counterfeits it, or imitates it.
Sub-section (2) of that section further provides that every ground on which a patent
may be revoked under s. 26 would be available by way of defence to a suit for
infringement. Section 30 of the said Act lays down that no damages can be recovered
in respect of the infringement of a patent if the defendant proves that at the date of
the infringement he was not aware, or had no reasonable means of making himself
aware, of the existence
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Page: 137
of the patent. Section 78A enacts that by virtue of a certain reciprocal arrangement
with the United Kingdom, any person who has applied for protection for any invention
in the United Kingdom would be entitled to claim that the patent which may be
granted to him under the Indian Patents and Designs Act for the said invention should
be in priority to other applicants and should have the same date as the date of the
application in the United Kingdom.
7. Turning to the first three issues which embody the questions in controversy
between the parties on the merits of the present case, it may be stated that issues
Nos. 1 and 2 relate to the subject of infringement, whilst issue No. 3 relates to the
question of the validity of the plaintiffs patent No. 58716. I will proceed to deal first
with the question of infringement which is the subject-matter of issues Nos. 1 and 2.
It was contended by Mr. Mistree for the defendants that the plaintiffs have led no
evidence on issue No. 1 and they must, therefore, fail on that issue, as well as on
issue No. 2 which is consequential thereto. Mr. Mistree's contention was that there is
nothing in the evidence on record to show that the manufacture of Uni-Tolbid tablets
or Tolbutamide by defendants Nos. 1 and 3 was carried out by using the processes
mentioned in the plaintiff's patent No. 58716 and the plaintiffs have, therefore, not
proved the alleged infringement of the said patent by defendants Nos. 1 and 3, the
onus in regard to which lay on the plaintiffs. It is true that, as stated by Halsbury, (3rd
edn.) Vol. 29, p. 106 para 218, the onus as to infringement lies on the plaintiff. In the
Canadian Patent Act there is a specific statutory provision viz., s. 41(2), which lays
down that in an action for infringement where the invention relates to the production
of a new substance, any substance of the same chemical composition and constitution
shall, in the absence of proof to the contrary, be deemed to have been produced by
the patented process of which it is alleged to be an infringement. Though there is no
corresponding provision in the Indian Patents and Designs Act, I see no reason why a
presumption to the same effect should not be drawn by me against the defendants in
the present case under the general provisions contained in s. 114 of the Indian
Evidence Act, since it is admitted by the defendants that it is the very drug
Tolbutamide, in respect of which the plaintiffs have obtained their patent No. 58716,
that they have prepared and sold. Moreover, though the general burden of establishing
the case of infringement undoubtedly rests on the plaintiffs as laid down in the
statement from Halsbury mentioned above which is in accordance with s. 101 of the
Indian Evidence Act, the burden of proving a particular fact viz., the process by which
Tolbutamide is being prepared by the defendants would be on the defendants, since
that is a fact “especially” within their knowledge within the terms of s. 106 of the
Indian Evidence Act. It is impossible for the plaintiffs to know by what precise process
Tolbutamide is being prepared by the defendants and it is precisely to that sort of a
case that s. 106 is intended to apply. The defendants have not led any evidence
whatsoever in regard to the same. That, however, is not all. The first question that
arises is, what is the infringement complained of by the plaintiffs in the present suit.
In the opening sentence of para 4 of the plaint it is no doubt stated in very wide terms
that defendants No. 1 have infringed the Plaintiffs' said patent No. 58716. That
averment is not limited to the infringement of any particular claim or claims in the
Plaintiffs' said patent. In the following sentence of the said paragraph, however, it is
stated that defendants No. 1 have manufactured, prepared and sold Uni-Tolbid tablets
or Tolbutamide manufactured in accordance with or by the use of the invention
disclosed in the complete specification of the Plaintiffs' said patent “and claimed in
claims 1 and 11.” It is not necessary for me to decide on a construction of the said
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paragraph of the plaint whether the latter everment should be read as restricting the
general averment with which the said paragraph
Page: 138
opens, as contended by Mr. Mistree for the defendants, in view of the fact that Mr.
Blanco White has conceded that, on the suit as framed, the infringement that has
been complained of is infringement only of claims Nos. 1 and 11 of the Plaintiffs' said
patent No. 58716. Counsel on both sides have argued this case throughout on that
footing, and I must, therefore, proceed to deal with the same on the basis that the
infringement complained of is infringement only of claims Nos. 1 and 11 of the
Plaintiffs' said patent.
8. As stated in Halsbury (3rd edn.) Vol. 29, p. 6, para 8, a complete specification

customarily begins, after the title, with a general preamble stating the subject to
which the invention relates, followed by a detailed description of one or more
embodiments of the inventions. The whole of that is known as the body of the
specification. It is further stated in the said paragraph of Halsbury that the
specification ends with the claims, delimiting the monopoly granted by the patent, and
since they define the monopoly, they must, in the event of legal proceedings, be
scrutinised with as much care as any other document defining a legal right, and
require to be as carefully drawn. It is stated in another passage in Halsbury (3rd edn.)
Vol. 29, p. 10, paras 16 and 17, that the specification is to be read as a whole, and
that the body of the specification should be read first. The claims must, however, be
read as ordinary English sentences without incorporating into them extracts from the
body of the specification, or changing their meaning by reference to the language used
in the body of the specification, though the body of the specification should be referred
to for the purpose of resolving difficulties of construction occasioned by the claims
when read by themselves. It is, therefore, clear that in an infringement action the
main function of the Court is to construe the claims which are alleged to have been
infringed, without reference to the body of the specification, and to refer to the body of
the specification only if there is any ambiguity or difficulty in the construction of the
claims in question.
9. [His Lordship, after holding that Claim No. 11 and Claim No. 1 were infringed by
the defendants, answered issues Nos. 1 and 2 in favour of the plaintiffs.]
10. That leaves for consideration only the question of the validity of the Plaintiffs'
patent which has been challenged by the defendants by way of defence to the
Plaintiffs' suit under s. 29(2) of the Indian Patents and Designs Act. That is the main
question that arises for decision in the present suit and it will, therefore, be necessary
for me to deal with it in all its aspects. The grounds on which the validity of the
Plaintiffs' patent is sought to be impeached by way of defence in this suit are to be
found in paras 5 and 6 of defendants No. 1's Written Statement, read along with the
particulars in respect thereof set out in an annexture to the plaint which is marked
“No. 2”. It will be convenient to deal with them one by one.
11. [His Lordship, after referring to the relevant paragraphs of the Written
Statement, proceeded.]
12. From what is discussed in the preceding paragraph it will, therefore, be clear
that the main heads of the alleged invalidity of the Plaintiffs' patent on which the
defendants rely by way of defence are four viz., (1) insufficiency of description; (2)
want of novelty; (3) no inventive step and (4) want of utility. It may be stated that
the onus in regard to all objections to validity lies on the defendant [Halsbury, (3rd
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edn.) Vol. 29, p. 106, para 218]. I shall now proceed to deal with each of these
grounds.
13. Dealing first with the ground of insufficiency of description it is stated in
Halsbury, (3rd edn.) Vol. 29, p. 64, para 131 that the claim need only be as clear as
the subject admits, and that a patentee need not so simplify his claim as to make it
easy for infringers to evade it. It is further stated in that passage in Halsbury that the
patentee's duty is not to prevent all possible argument as to whether there is or is not
infringement in particular cases,
Page: 139
but to enable the Court to formulate the questions of fact to be answered. It is further
stated in the same volume of Halsbury (p. 66, para 138) that insufficiency of
description has two branches, (1) the complete specification must describe “an
embodiment” of the invention claimed in each of the claims, and that the description
must be sufficient to enable those in the industry concerned to carry it into effect
“without their making further inventions”; and (2) that the description must be fair
i.e. it must not be unnecessarily difficult to follow. Turning first to claim No. 11 in the
present case in the light of these principles, the reference in the body of the
specification to “a conventional manner” of eliminating sulphur cannot really create
any difficulty, and it is in fact unnecessary to import this from the body of the
specification into claim No. 11 in view of the fact that claim No. 11 is unambiguous
and clear in terms, being wide enough to include all methods of eliminating sulphur.
As stated earlier in this judgment, it is permissible to refer to the body of the
specification only when there is some difficulty or ambiguity in the construction of a
claim as it stands. In any event, hydrogen peroxide as a desulphurising agent would
be an obvious chemical equivalent of heavy metal oxides or a salt thereof in an
aqueous or alcoholic solution which are also used for desulphurising in “a conventional
manner”. Moreover, the secret or discovery essential to the validity of the Plaintiffs'
invention as claimed and forming the very basis of it is not the method, but is the
previously undiscovered fact of a new class of chemical compounds having hitherto
unsuspected blood sugar lowering properties, twenty-one methods of synthesis of
sulphonylureas being already known at the material time as is apparent from p. 27 of
Kurzer's article on sulphonylureas and sulphonylthioureas in Vol. 50 of the Chemical
Review (exh. 1). There is no evidence led by the defendants to show that the
statement in the body of the specification that the synthesis of the desired
sulphonylurea may be obtained by eliminating sulphur with a heavy metal oxide or a
salt thereof in an aqueous or a alcoholic solution would present any difficulty. The
specification and claims are addressed to those with a high degree of knowledge of the
field of science to which they relate, particularly when they relate to chemistry and
allied subjects. It is not necessary to describe processes in the claims to a
specification when they are part of the common knowledge available to those skilled in
the science who can, after reading them, refer to the technical literature on the subject
for the purpose of carrying them into effect. “An embodiment” of the invention is,
therefore, in my opinion, sufficiently described in the Plaintiffs' patent and that
description is not unnecessarily difficult to follow, it being sufficient to enable the
invention to be carried into effect “without…making further inventions.” As far as claim
No. 1 is concerned, there are as many as forty examples of it in the specification (exh.
A) and there would, therefore, be no difficulty in carrying the same into effect. The
ground of insufficiency of description alleged by the defendants must, therefore, fail.
14. [His Lordship, after dealing with grounds Nos. 2 and 3 and finding in favour of
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the plaintiffs, proceeded.]
15. That brings me to the most important part of the present case and that is the
objection to the validity of the Plaintiffs' patent on the ground of want of utility, which
would also cover the other objection, already referred to by me, based on the ground
that the methods of manufacture comprised in the Plaintiffs' patent are old, an
objection which also rests in the ultimate analysis, on the decision in regard to the
question of utility. The first question that arises in regard to the subject of the utility
of the Plaintiffs' patent is what is the quantum of utility required to support a patent.
Reference may be made in that connection to the statement in Patents for Inventions
by T.A. Blanco White
Page: 140
(the learned counsel appearing’ for the plaintiffs in the present case), 3rd edn., at pp.
152-153 to the effect that in the absence of any promise in the specification that a
definite degree of advantage would result from the use of the invention, the amount of
utility required to support a patent is very small. It is further stated in the said
passage that it is, in particular, not necessary that the invention as described should
be commercially useful, unless the specification promises that it would be, and that it
is sufficient that invention should, by reason of the features that distinguish it from
earlier proposals, be of some use to the public. It is further stated that it is not
necessary that a new result should be obtained by using the invention, and that the
test is whether the new method “gives the public a useful choice.” In support of that
proposition, the learned counsel for the plaintiffs relied on the decision in the case of
Welsbach Incandescent Gas Light Company, Ld. v. New Incandescent (Sunlight
Patent) Gas Lighting Company, Ld.6 in which the patent in question was for a gas light
mantle, which though stronger than the gas light mantles under the earlier patent,
shed less candle power of light than those mantles. It was subsequently discovered
that while the patented light had low illuminating power, a small proportion of another
chemical substance added to it gave very great improvement in candle power. It was
contended on behalf of the defendants to the said action for infringement that since
the illuminating methods produced under the patent would give less light, it was not
an improvement at all on the mantles prepared under the earlier patent, but was a
falling off from it. It was observed in the judgment in the said case (at p. 251) that
there were two answers to the objection raised by the defendants. The first was that
the patent in question did not claim to be an improvement on the earlier patent but to
give a “useful choice”; and the second was that if the matter had to be decided by the
value of the mantle as an illuminating appliance alone the contention might be well-
founded, but there were advantages other than brilliancy and the new discovery
produced illuminating substances which had other qualities, viz. rigidity, flexibility or
durability. Judged by these tests, the position is that the Plaintiffs' patent in the
present case cannot be attacked on the ground of want of utility, since it certainly
gives a “useful choice” in the matter of compounds with a blood sugar lowering
property which was not known till then, unless by the specification (exh. A) a higher
degree of utility was promised by the plaintiffs. In the course of the evidence led
before me, the defendants have not been able to point out a single compound which
would fall within the patent, but which did not have blood sugar lowering property,
and all that they were able to point out was that some of those compounds were
weaker than others, a point which is of no relevance for the purpose of the present
case. I must, therefore, proceed to consider, what is the utility promised in the
specification (exh. A) for the compounds falling within it? A careful scrutiny of the
specification (exh. A) shows that all that is promised therein is, (1) that all the
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compounds falling within the Plaintiffs' patent would lower the blood sugar and (2)
that they are not sulphonamides and avoid the difficulty of the administration of
sulphonamides, viz. the causing of allergy as well as their bacterio-static activity. As
far as their toxicity is concerned, what is stated in the specification (exh. A) is that
their acute toxicity (tested on mice or rats) was as set out in Table No. Ill appended
thereto. Mr. Blanco White has submitted that there is no statement contained in the
specification (exh. A) by way of promise that any of the compounds falling within the
patent is safe for human beings. It is no doubt stated in the said specification that the
compounds of the invention are “usually extremely well-tolerated”, and that extensive
clinical tests performed on numerous patients had demonstrated good tolerance of the
compounds. It is common ground that the expression
Page: 141
“well tolerated” means that it had no strong side effects. It was sought to he
contended by Mr. Mistree for the defendants that it was, therefore, claimed in the
specification (exh. A) that all compounds falling within the patent had no toxic effect,
which would be one of the side effects to be guarded against. Mr. Mistree has
contended that he has established by the evidence of Dr. Bander that it could not be
predicted whether a particular sulphonylurea falling within the patent would be safe to
administer to a human being, and that he could not predict tolerability in human
beings by experimenting on animals, and the Plaintiffs' patent must, therefore, be
held to be invalid on the ground of want of the utility claimed for it in the specification
(exh. A). I am afraid, however, the statements in the specification on which Mr.
Mistree has relied cannot be torn from their context. It is quite clear from the
specification itself that extensive tests for toxicity of the compounds falling within the
patent had been performed on mice or rats. The statement that extensive clinical tests
performed on numerous patients had demonstrated good tolerance of those
compounds, when read in the context of the earlier statement in the said specification
that the said compounds are “usually” extremely well-tolerated, shows that it is
intended to apply only to such of the compounds as had been subjected to clinical
tests. I, therefore, hold that there is no claim in the specification (exh. A) in regard to
the utility of the compounds falling within the patent which has been disproved by the
evidence led in this case.
16. Strong reliance was placed by Mr. Mistree for the defendants on the judgment
of the Supreme Court of Canada reported in (1966) S.C.R. 189, confirming the
decision of the Exchequer Court of Canada reported in (1965) 1 Ex. C.R. 710, in regard
to the patent which the plaintiffs had obtained in Canada in respect of the very
processes for which the plaintiffs have obtained the patent in question in this country,
Tolbutamide being one of the compounds falling within both the Canadian patent as
well as the patent in this country. In the action in the Exchequer Court of Canada, the
plaintiffs to the present suit who were also party-plaintiffs there, had prayed for an
injunction for ten patents, a printed copy of one which viz. patent No. 590201 has
been tendered and marked exh. 2 in the present proceedings. The defendants to the
said suit had sold throughout Canada Tolbutamide in alleged infringement of the
Plaintiffs' said patents. The sale of Tolbutamide by them was admitted by the
defendants, but they pleaded that claims Nos. 1 and 10 of nine of the said patents and
claims Nos. 1 and 13 of patent No. 590201 were invalid for a number of reasons. If
one scrutinizes in the Canadian patent No. 590201 (exh. 2), claim No. 1 therein was,
as Mr. Mistree has rightly contended, a combination of claims Nos. 1 and 11 in the
present case, the validity of which has been questioned before me. It was not disputed
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that claim No. 10 in the first nine of the Canadian patents and claim No. 13 in
Canadian Patent No. 590201 (exh. 2) related to the compound Tolbutamide itself. It
contained the same formula as in Fig. 6 of the specification (exh. A) in the present
case, and referred to a compound of that formula whenever obtained according to
claim No. 1 or the obvious chemical equivalent thereof. I do not, however, accept the
contention of Mr. Blanco White that claim No. 1 in the Canadian patent is different in
material respects from claim No, 1 in the present case, merely because there is no
limitation in the Canadian patent in regard to carbon atoms as far as alkyl, alkoxy and
halogen are concerned. It is admitted by the Plaintiffs' own witnesses in the present
case that if R and R. 1 are varied simultaneously, and three different positions viz.
ortho, meta and para are used in respect of each monosubstituent, the possible
number of sulphonylureas that could be prepared according to claim No. 1 of the
Plaintiffs' patent (exh. A) would run into millions. The whole contention of Mr. Mistree
is that claim No. 1 of the Plaintiffs' patent No. 58716 is invalid
Page: 142
because it covers millions of compounds which have not been tested in respect of their
utility, and it is in support of that contention that Mr. Mistree has relied on the
Canadian case. Merely because, under the Canadian patent, the permutations and
combinations would run perhaps into some thousands or some millions more by
reason of the absence of any limitation with regard to carbon atoms as far as alkyl,
alkoxy and halogen are concerned, would make no difference in regard to the ratio of
the decision in the Canadian case. In my opinion, therefore, the decision in the
Canadian case cannot be distinguished on facts from the present case. Even so, I must
proceed to consider whether I should follow the same, as decisions of Canadian Courts
do not bind me. In the trial Court, Thurlow, J. in his judgment dealt with the question
of validity of claim No. 1 of the Plaintiffs' Canadian patent. He observed (at p. 728)
that there could not be an invention in a process which consists in applying a known
method of reaction to a limitless class of known materials to produce an equally
limitless class of expected products, when all that can properly be said of such
products is that some of them have utility and others, the identity of which is not
known, may have it as well, but that the infinite majority of the substances of the
class have never been made or tested by anyone. He held (at p. 734) that it is highly
improbable that all, or substantially all, of the members of the infinitely large class
defined in claim No. 1 of the ten patents have either the blood sugar lowering activity
to a useful extent or the freedom from toxicity or harmful side effects necessary to
render them useful. He, therefore, came to the conclusion (at p. 734) that there was
no invention as claimed in claim No. 1 of each of the said patents which was,
therefore, invalid. He further held that by reason of the provisions of s. 41(1) of the
Patent Act of Canada, a substance patent would be valid only if accompanied by a
valid process patent, and that in view of the invalidity of claim No. 1 of each of the ten
patents which contained the process patent, the substance patent in claim No. 10 in
the first nine patents and claim No. 13 in patent No. 590201 must also be held to be
invalid. In view of that conclusion, the learned Judge held that it was unnecessary for
him to consider the issue of infringement, and he accordingly dismissed the Plaintiffs'
action with costs. On appeal to the Supreme Court of Canada from the decision of the
Exchequer Court of Canada, it was held (at p. 191) that all the patents related to
processes which produced new sulphonylureas by known methods from known
materials, with the result that the patentability of the process depended on the
possession of unexpected utility by the new substances produced, and that the
unexpected utility stated in the patents was the capacity of lowering blood sugar
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levels which is referred to as hypoglycaemic activity. In the opinion of the Supreme
Court (at p. 194), what the appellant had tried to do in claim No. 1 of each of the
patents was to obtain a patent for an unproved and untested hypothesis in an
uncharted field which could not be held to be valid. The Supreme Court agreed with
the trial Court that the appellant had consequently overclaimed, and, in doing so, had
invalidated claim No. 1 in each of the patents before them. The Supreme Court also
confirmed the decision of Thurlow, J. that if claim No. 1 failed, the remaining claims in
the patents in question must also fail. Mr. Blanco White has submitted that he has no
quarrel with the decision of the Supreme Court, but that the decision of the Exchequer
Court goes a little too far in so far as it relies merely on the possible number of
compounds that would be comprised in claim No. 1. Mr. Blanco White contended that
the Supreme Court of Canada had, however, not gone merely on numbers, but had
proceeded to decide the case on the principle that the validity of the patents in
question depended on the possession of unexpected utility by the new substances
produced, and had invalidated the Plaintiffs' patents on the ground that the limitless
class of compounds comprised in them remained uncharted and unexplored. Mr.
Blanco White has
Page: 143
submitted that the decision in the Canadian case is not applicable to the present case,
because there is evidence in the present case of systematic exploration by way of
research leading to the establishment of the Mood sugar lowering properties of all the
compounds falling within the Plaintiffs' patent. That evidence consists in the present
case of the oral evidence of the Plaintiffs' expert witnesses, and documentary evidence
in the form of the chart (exh. B) as filled in by Dr. Anumuller, evidence which I accept
as reliable. As a result of that research, the necessary limitations in regard to the
carbon atoms in the radicals E and R. 1 were discovered, which in its turn led to the
invention that all compounds with those limitations had blood sugar lowering
properties and other compounds without those limitations did not have blood sugar
lowering properties, as Dr. Bander has deposed in examination-in-chief. It is not clear
from the judgment of the Supreme Court of Canada whether it has proceeded on a
basis different from the ratio of the decision of the Exchequer Court of Canada, as Mr.
Blanco White has submitted in the course of his argument. In any event, I do not
agree with the decision of the Exchequer Court in so far as it has proceeded purely on
a numerical basis and has rested its judgment merely on the fact that there would be
a large number of possible compounds that could be produced by the patented
process which had not been tested. In my opinion, when a process patent is obtained
after prolonged and thorough research work, it may be possible to predict that the
substances produced by that process would have a particular property, though it is
usually impossible for anybody to test all the possible substances that could be
produced by that process. As stated in Terrell on the Law of Patents (11th edn.) p.
128, para 315, it is wrong to suppose that “there is no previson in chemistry”. I accept
the evidence of Dr. Bander that when several pharmacological compounds having the
same characteristic structure exhibit the same pharmacological behaviour, it can be
predicted that other such compounds would have the same behaviour, provided the
necessary limitations in regard to radicals are observed, particularly when compounds
without those limitations have also been tested and found not to have the property in
question. I am afraid I am unable to agree with the decision of the Exchequer Court of
Canada in the above case that merely because a process patent may embrace a very
large number of compounds, all of which, or even a substantial number of which,
cannot be individually tested, the patent must be held to be invalid. To take that view
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would, in my opinion, invalidate a large number of process patents. I, therefore,
decline to follow the decision of the Exchequer Court of Canada in the above case. If
the Supreme Court of Canada intended to lay down a different test viz. the test as to
whether the new substances produced by that process can, after proper research, be
predicted as possessing “unexpected utility” in the form of hypoglycaemic effect, I
agree with that view. That test is satisfied in the present case, as held by me above.
17. I am informed that the Patent Office in this country follows the same practice
as is prevalent in Canada which is based on s. 41(1) of the Canadian Patent Act
mentioned above, which in its turn was based on a section in the old Patent Act in
England that, as far as chemical substances intended for food or medicine are
concerned, patents cannot be granted for the substance itself, except when prepared
by the processes claimed or their obvious chemical equivalents. It has been stated to
me that this practice of the Indian Office is based on the English practice. I am afraid,
however, the Indian Patent Office has overlooked the fact that the section on which
the English practice was based has since been repealed in England (vide Terrell on the
Law of Patents (11th edn.) p. 20, para 53) and does not find place in the new English
Patents Act of 1949, and there is no such practice now prevalent in England, and that
there is no section corresponding to the old English section or to s. 41(1) of the
Canadian Patent Act in the Indian Patents and
Page: 144
Designs Act. There is, therefore, no warrant for chemical patents being treated in this
country in a way different from other patents, in regard to which the patent office in
this country does grant patents for substances per se. In the absence of express
statutory provisions, as stated in Terrell on the Law of Patents (11th edn.) pp. 127-
128, para 315, the belief that the law applicable to chemical cases is peculiar is
erroneous, and the principles applicable in the case of patents for chemical processes
are “precisely similar” to those applicable in the case of other patents.
18. The validity of a claim corresponding to claim No. 1 in the present case was also
challenged in an infringement action brought by the present plaintiffs in Ireland where
the validity of that claim was upheld by the Irish Court in a judgment delivered on
November 28, 1967 7. It may be stated that the plaintiffs have registered a substance
patent for Tolbutamide in England but their patent in Ireland is a process patent only
in view of the statutory provisions in force there. In upholding the Plaintiffs' patent, it
was stated by Kenny, J. in his judgment in the said Irish case,
“In my opinion, the writer of the claims in a process patent is entitled to include
claims for processes which he is certain will work because of the results of other
processes.”
19. I am in full agreement with that view of Kenny, J. The question which arose for
decision in the Canadian case and is raised by Mr. Mistree in the present case,
however, did not arise before the Court in Ireland and it is, therefore, not necessary for
me to deal any further with the same. It may be mentioned that the Canadian case
discussed above, though earlier in point of time, has not been considered in the
judgment in the Irish case.
20. As stated by Halsbury (3rd edn.) Vol. 29, p. 59, para 123, the expression “not
useful” in patent law means that the invention will not work, either in the sense that it
will not operate at all or, more broadly, that it will not do what the specification
promises that it will do. If the invention will give the result promised at all, the
objection on the ground of want of utility must fail. It is further stated in the said
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passage that the practical usefulness or commercial utility of the invention does not
matter, nor does it matter whether the invention is of any real benefit to the public, or
particularly suitable for the purposes suggested, and that it is only failure to produce
the results promised that will invalidate the patent, not misstatements as to the
purposes to which such results might be applied. In Terrell on the Law of Patents,
(11th edn.) p. 98, para 248, quoting from an English case, it is stated that if the
patentee claims protection for a process for producing a result and that result cannot
be produced by the process, the consideration fails. It is further stated there that
objections to patents on such grounds are sometimes treated as objections for want of
utility, and when so treated, the well-known rule is that the utility of an invention
depends upon whether, following the directions of the patentee, the result which the
patentee professed to produce can in fact be produced. Quoting from another English
case, the same proposition is stated in another way in Terrell at p. 99, viz. that the
protection is purchased by the promise of results, and that it does not, and ought not
to, survive “the proved failure” of the promise to produce the results. As already stated
above, the only result which the specification (exh. A) in the present case professed to
produce was a new class of chemical compounds having hitherto unsuspected blood
sugar lowering property, but without the undesirable side effects of the previously
known sulphonamides. As also stated above, the defendants have not been able to
prove that a single compound falling within the patent does not possess blood sugar
lowering properties to a greater or lesser degree. The position,
Page: 145
therefore, is that not only is there no “proved failure” to produce the results promised
by the Plaintiffs' patent specification (exh. A), but there is a “proved failure” on the
part of the defendants to show that compounds falling within the patent do not have
the blood sugar lowering properties promised by that patent. I, therefore, hold that
the objection on the ground of want of utility must fail, and with it also the objection
that the methods of manufacture are old and known methods and, therefore, there is
no inventive step as far as the Plaintiffs' patent No. 58716 is concerned. In the result,
all the grounds on which the validity of the Plaintiffs' patent was challenged stand
rejected, and issue No. 3 must be answered in favour of the plaintiffs.
21. In view of the conclusions at which I have arrived, the plaintiffs will be entitled
to the normal reliefs available in an infringement action, viz., an injunction, as well as
an order for the delivering up for destruction of all articles in the defendants'
possession made in infringement of the Plaintiffs' patent No. 58716. The plaintiffs
have, however, not led any evidence before me to prove damages, nor has any
argument been addressed to me in regard to the claim for damages or the alternative
claim for an account of the profits contained in prayer (c) of the plaint which must,
therefore, be treated as not pressed by the plaintiffs.
22. I answer the issues as follows:—
1. In the affirmative.
2. In the affirmative.
3. Plaintiffs' patent No. 58716 is not invalid and is not liable to be revoked on any of
those grounds.
4. In the negative.
5. In the negative.
6. The plaintiffs are entitled to relief by way of injunction, but the reliefs sought in
prayer (c) of the plaint have not been pressed.
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7. See Order below.
Order:—
23. I grant an injunction in terms of prayer (a) and pass an order in terms of prayer
(d). I also order that the defendants do pay the Plaintiffs' costs of the suit.
24. Under s. 32 of the Indian Patents and Designs Act, I certify that the validity of
the patent came in question in this suit. Mr. Laud states that his clients will not
enforce the orders passed by me for a period of two weeks from today in order to
enable the defendants to consider my judgment.
25. In accordance with s. 33 of the said Act, I direct that a copy of this judgment
be sent to the Controller of Patents and Designs,* .
———
* O.C.J. Suit No. 132 of 1962.
1. [1964] R.P.C. 54, at p. 81.
2.
(1887) 4 R.P.C. 333.
3. (1912) 29 R.P.C. 245.
4. (1953) 71 R.P.C. 23.
5.
(1935) 37 Bom. L.R. 665, at p. 668.
6. (1900) 17 R.P.C. 237.
7. (1967) Suit 1964 No. 201 P decided by Kenny, J. on November 28, 1967 (High Court of Ireland) (Unrep.).
* [Note:—This case was decided when the Indian Patents and Designs Act, 1911, was in force, under which
claims for the process and product made by that process were patentable. Under the Patents Act, 1970 which
came into force on April 20, 1972, only claim to a single process can be patented in the use of medicines and
drugs].
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Page 1 Friday, March 13, 2020

Bombay High Court

Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius &

The Judgment of the Court was delivered by

2. On merits, the defence of defendants No. 1 as disclosed by their Written

8. As stated in Halsbury (3rd edn.) Vol. 29, p. 6, para 8, a complete specification

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