BISWANATH PRASAD RADHEY SHYAM versus HINDUSTAN METAL INDUSTRIES

BISWANATII PRASAD RADHEY SHYAM

HINDUSTAN METAL INDUSTRIES

December 13, 1978

(R. S. SARKARIA, V. D. T\JLZAPURKAR AND A. P. SEN, JJ.]

Indian Patent and Designs Act, 1911-Patent law, object, fundamental pri1Jciple-Utility of invention, whether necessary-Patentable improvement, requirements-Novelty artd inventive step test of-Grant of patent, whether guarantees validity-Specification, how to be construed.

Th~ appellant and the respondent, are both firms carrying on the busi-ness of ra.anufacturing utensils at Mirzapur. In 1951 one of the partners of the respondent firm claimed to have invented device and method for manu~ facturing ulensils, intrcducing improvement, convenience, speed, safety and better finish, in !he old prevalent method which mw fraught with risk to the workers, inasmuch as the utensils used to fly off from the headstock, during the manufacturing process. The respondent filed the necessary specifications and claims, in the patent office, and got the alleged invention patented under the Indian Patent and Designs Act, 1911, with effect from December, 13, 1951, as assignee of the patent, and acquired the sole and exclusive right of using this method and means for manufacturing utensils. In September 1952, the respondent learning that the appellant firm was using the patented method, 5e1ved notice upon it, asking for desistance from the infringement of its patent, but the appellant continued to use the patented method. The res· pendent then filed suit for permanent injunction restraining the appellant adopting, imitating, employing or in any manner infringing the device of its patemt. The appellant resisted the suit, filed counter-cla.im and separate petition under s. 26 of the Act, for revocation of the patent, contending that neither was the respondent's alleged invention manner of new 1nanufacture or improvement, nor did it involve any inventive step or novelty, having regard to v,rhat was known or used prior to the patent. The respondent's suit and the appellant's counter-claim were transferred to the High Court under s. 29 (proviso). Both the suits were consolidated and tried together by single Judge who dismissed the suit for injuncti9n and allowed the petition for revoct:ition of the patent, issued to the respondent. In appeal, Division Bench of the High Court reversed the earlier judgment, and set aside the decree.

Allowing the appeals, the Court .

HELD : 1. The object of patent Jaw is to encourage scientific research, new technology and industrial progress. The price of the grant of the mono-poly is the disclosure of the invention at the Patent Office, which, after the expiry of the fixed period of the monopoly, passes into the public domain. [763 C-D]. 2. The fundamental principle of Patent law is that patent is gra•.Jted only for an invention which must have novelty and utility. It is essential for the vaUdity of patent that it must be the inventor's own discovery as opposed to mere verification of what was, already known before the date of the patent. [763 D-E]. 10-40SCI/79

17 58 SUPREME COURT REPORTS

l\ 3. The Act of 1911, does not specify the requirement of being, useful, in the definition of 'invention', but courts have e.lways taken the view that patentable invention, apart from being new manufacture, must also be useful. Thr. foundation for this judicial interpretation, is to be found in the fact that s. 26(1)(f) of the Act recognises lack of utility as one of tho grounds on which patent cau be revoked. [763 E·Fl. 4. In order to be patentable, an improvement on something known before or combination of different matters already known, should be something more than mere workshop 'improvement, and must independently satisfy the test of invention or an inventive step. It must produce new result, or new article or better or cheaper article than before. The new subject matter must involve "inv'ention" over what is old. Mere collocation of more than one, integers or things, not involving the exercise of any inventive faculty does not qualify for the grant of patent. [763 H, 764 A·B].

Rickman v. Thierry, [1896) 14 Pat. Ca. 105; Blackey v. Latham, [1888] 6 Pat. Ca. 184; and Encyclopaedia Britannica, Vol. 17 page 453; applied.

5. To decide whether an alleged invention involves novelty and an inven· tive step, certain broad criteria can ·be indicated. Firstly if the "manner of manufacture" patented, was publicly known, used or practised in the country before or at the date of the patent, it will negative novelty or 'subject m3'tter'. Prior public knowledge of the alleged i~vention can be by word of mouth or by publication through books or other media. Secondlya the alleged discovery muc;t not be the obvious or natural suggestion of what was previously known. [765 A·B, EJ.

Humplherson v. Syer, 4RPC 407; and Rado v. lohn Tye & Sons Ltd., 1967 RPC 297; applied.

Halsbury 3rd Edn. Vol. 29. p. 42 aud Farbwerke Hoechst & B. Corp. v. Untchan Laboratories, AIR 1969 Bom. 255; ·referred to.

6. The grant and sealing of the patent, or the decision rendered by the Controller in the case of opposition, does not guarantee the validity of the patent, which can be challenged before the High Court on various grounds in revocation or infringement proceedings. This is now expressly provided in s. 13(4) of the Patents Act, 1970. [767 G·H, 768 A]. •

7. The proper way to construe specification is, to first reb.d the descrip-tion of the invention, and then see the cfaims. For, patentee cannot claim more than he desires to patent. [772 E}.

Arnold v. Bradbury, [1871] 6 Ch. A. 706; applied.

Parkinson v. Simon, [1894] 11 RPC 483; referred to.

8. The invention got patented by Mis. Hindustan Metal Tndu!ltries, was neither manner of new manufacture, nor distinctive improvement on the old contrivance involving any novelty or inventive step having :regard to what was already known and practised in the country for long time before 195l. It is merely an aoplication of an old inventi0n, with slight change in the mode of apolicatioo, which is no more thnrr a· 'workshop improvement'. [770 D·E, 774 F].

Harwood v. Great Northern, Ry. Co., [1864-65] XI HLC 654 applied.

CIVIL APPELLATE JURISDICTION : Civil Appeal Nos. 1630-1631 of 1969.

Appeal from the Judgment and Decree dated 18-1-1966 of the Allahabad High Court in Special Appeals Nos. 128/57 and 191/57.

K. B. Asthana and M. V. Goswami for the Appellant.

S. K. Mehta and P. N. Puri for the Respondent . The Judgment of the Court was delivered by

SARKARIA, J.-These two appeals on certificate arise out of common judgment and decree, dated January 18, 1966, of Division Bench of the High Court of Allahabad. The facts material to these appeals may be set out as under :

The facts material to these

M/s. Hindustan Metal Industries, respondent herein, (hereinafter called the plantiff) is registered partnership firm carrying on the busi-ness of manufacturing brass and German silver utensils at Mirzapur. M;s. Biswanath Prasad Radhey Shyam, appellant herein, (hereinafter called the defendant) is concern carrying on the business of manufac-turing dishes and utensils in Mirzapur. ~

On August 8, 1953, the plaintiff instituted suit for injunction and damages, preceded by notice, served on the defendant on September 9, 1952, in the Court of the District Judge, Allahabad, within whose jurisdiction Mirzapur is situated, with these allegations :

The old method of manufacturing utensils, partciular!y shallow dishes, was to turn scrap and polish them on some sort of headstock without tailstock, the utensils either being fixed to the headstock by thermoplastic cement or held in the jaws of chuck fixed to the head-stock. This system was, however, fraught with risk to the workers inasmuch as the utensils used to fly off from the headstock. Conse-quently with view to introduce improvement, convenience speed, safety and better finish, Purshottam Dass, one of the partners of the plantiff-firm, invented device and method for the manufacture of utensils, in 1951. The plaintiff after filing the necessary specifications and claims in the Patent Office, got the alleged invention patented under the Indian Patent and Designs Act, 1911 (hereinafter called the Act), at No. 46368-51 on May 6, 1953 with effect from December 13, 1951 as assignee of the said patent. By virtue of this patent, the plain-tiff acquired the sole and exclusive right of using this method and means for the manufacture of utensils. In September 1952, the plaintiff learnt that the defendant was using and employing the device and method

I\ of manufacturing of dishes under the former's patent. The ,plaintift served notice upon the defendant asking him to desist from infringing the plaintiff's patent, but the defendant continued to infringe the patent.

The ,plaintift

On the preceding facts, the plaintiff prayed for permanent injunc-B tion restraining the defendant from adopting, imitating, employing or in any manner infringing the device of the plaintiff's patent. · The plaintiff further prayed for mandatory injunction requiring the defen-dant to destroy the articles used for the infringement of his patent. The plaintiff further claimed decree for Rs. 3,000/- as damages.

The defendant resisted the suit on various grow1ds, out of those which are material for the decision of these appeals are : that the defendant's firm is an old concern carrying on the manufacture of metal wares since Jong; that the method covered by the plaintiff's patent, namely, that of lathe (headstock, adapter and tailstock) has been known and openly and commonly in use in the commercial world all over the country for several decades before the plaintiff's patent; that the alleged invention of the plaintiff was not on the date of the patent, manner of new manufacture or improvement, nor did it involve any inventive step or ingenuity having regard to what was known or used prior to the date of the patent; and that the patent has no utility and therefore it was liable to be revoked.

The defendant also filed counter-claim, praying for revocation ;r of the patent on the same grounds which he had set out in the written~ statement.

On October 13, 1953, the defendant along with three other busi-ness concerns, filed petition under Section 26 of the Act for revoca-tion of the patent that had been granted to M/s. Hindustan Metal Industries, :Mirzapur on the same grounds which were raised in his counter-claim in the suit for injunction and damages.

The plaintiff's suit along with the cowiter-daim of the defendant, was transferred to the High Court under Section 2:9 (Proviso) of the Act. Both the suits were consolidated and tried together by learned Single Judge (V. G. Dak, J). Issues were framed and evidence were Jed by the parties. The findings, material for onr purpose, of the learned trial Judge, are :

(i) The patent does not involve any inventive step having regard to what was known or used prior to the patent.

(ii) The work of turning or scraping utensils of various designs bas been going on at Mirzapur and other places for many years before 1951. The changes introduced by the patentee in Ex. CC are of minor nature. The alleged invention was not on the date of the patent, manner of new manufacture or improvement. It did not involve . any novelty.

(3) That, in 1951, the plaintiff invented the method of mounting which has been patented.

(4) That, immediately after this, the work of manufactur-ing plates and dishes restarted at Mirzapur and was carried on with success.

( 5) That lathes have been well known for long time and they consist essentially of headstock and tailstock which are used for holding the article to be worked upon.

(6) That the known-uses, to which tai!stock has been put, were centering the article, holding along work by pointed tailstock by pivoting it and holding an article in metal spinning by the pressure of pad attached to the tailstock .

(7) That the method of holding an article by the pressure of point of pointed tailstock was neither used nor known."

"In our

On these findings, the Appellate Bench concluded "In our opinion, the method of mounting patented by the appellant did in-B volve an inventive step and was manner of new manufacture and improvement". In the result, it allowed the appeals, set aside the judgment and decree of the learned trial Judge and decreed the plain-tiff's suit with costs.

Hence, these appeals.

Mr. Asthana, learned counsel for the appellant, has canvassed these points :

(i) The method and means claimed by the respondent in Patent No. 46368-51 did not involve any inventive step or novelty.

(ii) The Appellate Bench of the lfigh Court was in error in hold-D ing that the supporting of an article in lathe by the pressure of the point of pointed tailstock constituted the novelty of the invention, inasmuch as it overlooked the fact that the scope of the patented invention in the "claims" in the complete specification does not con-tain an assertion of novelty of the pointed tailstock, but rather it specifically says that the pressure spindle may be pointed or blunt"· I

(iii) The Division Bench of the High Court having held that tailstock was used for holding the article to be worked upon and that if pointed tailstock was used always for very long time prior to y the patent for holding an article in metal. spinning by pressure, con-· tradicted itself in concluding that holding an article by the pressure of pointed tailstock was neither used nor known. The lfigh Court thus made out new case for the paintiff, which had not been alleged either in the specifications in the subject of the patent or in the plead-ing.(iv) The alleged inventor, Purshottam Dass, though he attended the Court on some dates of hearing, did not dare to appear in the witness-box, nor was he called as witness in the case by the plaintiff to explain in what way, if at all, the method and means patented by the plaintiff was novelty or involved an inventive step. The failure to examine Purshottam Dass who was partner of the plaintiff-firm, would give rise to an inference adverse to the plaintiff.

As against this, Mr. Mehta, appearing for the respondent, sub-mits that whether the process got patented by the respondent involves method of new manufacture or improvement, is one purely of fact,

.and should not, as matter of practice, be disturbed by this Court. Even in cases of doubt-proceeds the argument-the Court should uphold the parent. It is submitted that patent is granted by the Con-troller after due inquiry and publication and, unless the contrary is proved, should be presumed to have been duly granted. In the instant case, 'it is urged, that presumption is stronger because the trial Judge ,as well as the Appellate Bench of the High Court have concurrently held that the process patented had utility.

Before dealing with these contentions let us have general idea of the object, the relevant provisions and the scheme of the Act.

The object of Patent Law is to encourage scientific research, new technology and industrial progress. Grant of exclusive privilege to own, use or sell the method or the product patented for limited :period, stimulates new inventions of commercial utility. The price of the grant of the monopoly is the disclosure of the invention at the Patent Office, which after the expiry of the fixed period of the mono-'poly, passes into the public domain.

The fundamental principle of Patent Law is that patent is granted ,onJy for an invention which must be new and useful. That is to say, it must have novelty and utility. It is essential for the validity of patent that it must be the inventor's own discovery as opposed to mere verification of what was, already known before the date of the patent.

" 'Invention' means any manner of new manufacture and includes an improvement and an allied invention". [Section 2(8) of 1911 Act]. It is to be noted that unlike the Patents Act 1970, the Act of 1911 does not specify the requirement of being useful in the definition of 'invention'. But Courts have always taken the view that patent-able invention, apart from being new manufacture, must also be useful. The foundation for this judicial interpretati°11 is to be found in the fact that Section 26(1) (f) of the 1911 Act recognises lack of utility as one of the grounds on which patent can be revoked.

'Manufacture' according to the definition of the term in Section 2(11) of the Act, includes not only "any art, process or manner of providing, preparing or making an article" but also "any article pre· pared or produced by the manufacture".

It is important to bear in mind that in order to be patentable an improvement on something known before or combination of different matters already known, should be something more than mere work-,shop improvement; and must independently satisfy the test of invention

or an 'inventive step'. To be patentable the improvement or the, combic nation must produce new result, or new article or better or cheaper article than before. The combination of old known integers may be so combined that by their working inter relation they produce new pro-cess or improved result. Mere collocation of more than one integers or things, not involving the exercise of any inventive faculty, does not qualijy for the grant of patent. 'It is not enough', said Lord Davey in Rickmann v. Thierry (1896) 14 Pat. Ca. 105 'that the purpose is new or that there is novelty in the application, so that the article produced is in that sense new, but there must be novelty in the mode of application. By that, I understand that in adopting the old con-trivance to the new purpose, there must be difficulties to be overcome, requiring what is called invention, or there must be some ingenuity in the mode of making the adoption'. As Cotton L. J. put in Blackey v. Latham (1888) 6 Pat. Ca. 184, to be new in the patent sense, the novelty must show invention". In other words, in order to be paten-table, the new subject matter must involve 'invention' over what is old. Determination of this question, which in reality is crucial test, has been one of the most difficult aspects of Patent Law, and has led to considerable conflict of judicial opinion.

This aspect of the law relating to patentable inventions, as prevail-ing in Britain, has been neatly summed up iu Encyclopaedia Britannica, Vol. 17, page 453. Since in India, also, the law on the subject is substantially the same, it will be profitable to extract the same here-under :

"A patent can be granted only for 'manner of new manufacture' and although an invention may be 'new' and relate to 'manner of manufacture' it is not necessarily 'manner of new manufacture' -F it may be only normal development of an existing manufacture. It is necessary qualification of craftsman that he should have the knowledge and ability to vary his methods to meet the task before him-a tailor must cut his cloth to suit the fashion of the day-and any monopoly that would interfere with the craftsman's use of his skill and knowledge would be intolerable.

"A patentable invention, therefore, must involve something which 'is outside the probable capacity of craftsman-which is expressed by saying it must have 'subject matter' or involve an 'inventive step'. Novelty and subject matter are obviously closely allied .... Although these issues must be pleaded separately, both are invariably raised by a· defendant, and in fact 'subject matter' is the crucial test, for which they may well be novelty not involving a11 'inventive step', it is hard to con-ceive how there can be an 'inventive step' without novelty."

Whether an alleged invention involves novelty and an 'inventive step', is mixed question of law and fact, depending largely on the circumstances of the case. Although no absolute test uniformly appli-cable in all circumstances can be devised, certain broad criteria can be indicated. Whether the "manner of manufacture" patented, was publicly known, used and practised in the country before or at the date of the patent? If the answer to this question is 'yes', it will negative novelty or 'subject matter'. Prior public knowledge of the alleged invention which would disqualify the grant of patent can be by word of mouth or by publication through books or other media. "If the public once becomes possessed of an invention", says Hindmarch on Patents (quoted with approval by Fry L. J. in Humpherson v. Syer('), "by any means whatsoever, no subsequent patent for it can be granted either to the true or first inventor himself or any other person; for the public cannot be deprived of the right to use the invention ...... the public already possessing everything that he could give."

The expression "does not involve any inventive step" used in Section 26(1) (a) of the Act and its equivalent word "obvious", have acquired special significance in the terminology of Patent Law. The 'obvious-ness' has to be strictly and objectively judged. For this determination several forms of the question have been suggested. The one sugges-ted by Salmond L. J. in Rado v. John Tye & Son Ltd.(') is apposite. It is : "Whether the alleged discovery lies so much out of the Track of what was known before as not naturally to suggest itself to person thinking on the subject, it must not be the obvious or natural sugges-tion of what was previously known."

Another test of whether document is publication which would negative existence of novelty or an "inventive step" is suggested, as under :

"Had the document been placed in the hands of competent craftsman (or engineer as distinguished from mere artisan), endowed with the common general knowledge at the 'priority date', who was faced with the problem solved by the patentee but without knowledge of the patented invention, would he have said, "this gives me what I want?" (Encyclopaedia Britannica; ibid). To put it in another form : "Was it for practical purposes obvious to skilled worker, in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he

(I) 4 R.P.C. 407. (2) (1967) R.P.C. 297.

would or should make' the invention the subject of the claim con-cerned?" Halsbury, 3rd Edn, Vol. 29, p. 42 referred to by Vimada-lal J. of Bombay High Court in Farbwrke Hoechst & B. Corporation v. Untchan Laboratories(').

With the aforesaid pi:efatory survey, we now turn to the 1911 Act. The Act provides various checks to prevent an invalid patent being granted which does not involve any inventive step or manner of new manufacture or improvement. The procedure for obtaining an exclu-sive privilege under this Act (before the Amending Act 39 of 1970), may be described as below : The true and first inventor or his legal representative or assignee submits an application in the prescribed form and manner to the Patent Office. The application must contain declaration to the effect that the application is in possession of an invention, for which he desires to obtain patent. Such an application must be accompanied, inter alia, by either provisional or complete specification. provisional speci-D fication must prescribe the nature of the invention. complete speci-fication mnst particularly describe and ascertain the nature of the invention and the manner in which the same is to be performed. specification whether provisional or complete, must commence with the title, and in case of complete specification must and with distinct statement of the invention claimed. (Sec. 4) The Controller then considers that application and may require the applicant to supply suitable drawings and such drawings shall be deemed to form part of the compJ.ete specification. If complete specification is not left with the application, the applicant may leave it at any subsequent time within 9 months from the date of the appli-F cation. The application is then examined by the Controller of Patents for the patentability of the invention. The Controller then makes thorough search among his records for novelty. The Controller is bound to refer to an Examiner an application, in respect of which complete specification has been filed. The Examiner then, after care-ful and elaborate examination, submits his report to the Controller, inter aUa, as to whether or not-

(a) the nature of the invention or the manner in which it is to be performed is particularly described and ascertained in the complete specification; (b) the application, specification and drawings have been pre-pared in the prescribed manner:

~-----~ (1) A.LR. 1969 Born. 255.

(c) the title of the specification sufficiently indicates the subject-matter of the invention;

( d) the statement of claim sufficiently defines the invention;

( dd) the invention particularly described in the complete speci-ftcation is substantially the same as that which is described in the pro--visional specification;

( e) the invention as described and manner of new manufacture or improvement;

claimed is prima facie

(f) the specification relates to more than one invention;

If, on perusing the report, the Controller is not satisfied with regard to any of the matters enumerated in Clauses (a) to (h) of Section 5 ( 1), he may refuse to accept the application or require that the application, specification or drawings be amended before he pro-ceeds with the application. If the Controller is satisfied with regard to these matters and accepts the application, he shall give notice there-of to the applicant and shall advertise the acceptance; and the appli-cation and specification with the drawings, if any, shall be open to public inspection. (Sec. 6)

Within four months from the date of the advertisement of the acceptance of an application, any person may give notice at the Patent ·Office of opposition to the grant of the patent on any of the grounds mentioned in Clauses (a) to ( e) of sub-section (1) of Section 9, and on no other ground.

After hearing the applicant and the opponent, if desirous of being heard, the Controller renders his decision, which is appealable to the Central Government. If there is no opposition, or if the deter-mination is in favour of the grant of the patent, the patent shall be granted and sealed subject to· such conditions as the Central Govern-ment thinks it expedient.

It is noteworthy that the grant and sealing of the patent, or the decision rendered by the Controller in the case of opposition, does not guarantee the validity of the patent, which can be challenged before the High Court on various grounds in revocation or infringe-ment proceedings. It is pertinent to note that this position, viz. the ~·alidity of patent is not guaranteed by the grant, is now expressly

[1979] 2 s.c.R.

(h) that the complete specification does not suffi-ciently and clearly ascertain the scope of the invention claimed;

(i) that the patent was obtained on false SU!ll!CS-tion or representation;

(j) to (n) .......................... "

The ground is now clear for dealing With the problem in hand.

Although the defendant had both in his defence and in the counter-claim for revocation of the patent pleaded six grounds mentioned in Clauses (d), (e), (f), (g), (i) and (b) of Section 26(1), yet, in this appeal before us the controversy has narrowed down into two issnes : (i) Whether the patent was not at the date of the patent, manner of new manufacture or improvement; (ii) whether the invention does not involve any inventive step, having regard to what was known or used prior to the date of the patent ? At the trial,, M/s. Biswanath Prasad Radhay Shyam had examined 9 witnesses to show that the method of manufacture described in the patent has been publicly known and in use at Mirzapur and elsewhere long before 1951. On the other hand, the patentee firm, M/s. Hindustan Metal Industries, examined 4 witnes-5es to prove that the work of scraping and polishing of utensils formerly done at Minapur, was on crude machines and that the machine (Ex. CC) developed by the patentee is distinct improvement over the machines of the old type.

The learned trial Judge, after careful appraisal of the evidence produced by the parties, found that the following facts have been esta-blished :

"(i) The manufacture of utensils is an old industry at Mirza-pur and at other places in U.P. and in other parts of India;

(ii) lathe is well-known mechanism used for spinning and number of other processes;

(iii) adapters were in use for holding tumably, articles (7) of sui•able sizes, for holding plates and dishes, also, were in use before 19 51 ;

(iv) the tailstock was probably used in this industry before 1951:

(v) no bracket or angle, as used in the defendant's machine <Ex. CC) appears to have been used in this industry before 1951;

[1979] 2 s.c.R.

(vi) work on plates and dishes was suspended at Mirzapur for few years before 1951."

The trial Judge then found that mere addition of bracket did not amount to novelty. He further observed that Circumstance VI was of neutral character because it could not be definitely held that the work had been suspended due to defect in the contrivance which was then in use. It might well be due to labour trouble as the witnesses examined by the appellant bad deposed. From Circumstances I, II, III and IV, inspection of the machines (Ex. CC and Ex. XVI), produced by the appellant and the other material on record, the trial Court found both issue, ·set out above, against the patentee-firm.

We have ourselves examined the evidence on record with the aid of the learned Counsel for the parties, and have ourselves compared the machines (Ex. CC and Ex. XVI) which were produced before us. We do not want to rehash the evidence. Suffice it to say, we do not find that any piece of evidence has been misread, overlooked or omitted from consideration. The view taken by the trial Court was quite reasonable and entitled to due weight. In our opinion, it did not suffor from any infirmity or serious flaw which would have warranted interference by the Appellate Bench.

Be that as it may, from the discussion that follows, the c~nclusion is inescapable that the invention got patented by M/s. Hindustan Metal Industries, respondent herein, was neither manner of new mlnufacture, nor distinctive improvement on the old contrivance. in volv;ng any novelty or inventive step having regard to what was already known and practised in the country for long time before 1951.

Let us now have look at the invention descri':ied in th~ 'specifica-tions' and the 'claims' in the patent in question. Jn tt.e provisional specification, the title or subject of the patent is described as foilows "Method of end means for mounting metallic utensils or the like on lathe for turning them before polishing." • The title of the patent mentioned in the complete specification is as under : "Means for holding utensils for turning purposes". Then follov;; description of the old method of manufacture, and it is stated :

"This invention relates to means for mounting metallic utensils for the pmpose of turning the same before polishing and deals particularly, though not e.xclusively, with utensils of

the type which cannot be conveniently and directly gripped by the jaws of the chucks and where the utensil tends to slip off the chuck and certain amount of risk is involved in applying the tool in the turning operation."

Thereafter, the new method of manufacture is described with reference to three figures or sketches. The crucial part of this specification runs as below :

"According to preferred feature of this invention the pres-sure end of the pressure spindle is rotatably mounted and for this purpose it comprises an independent piece engaged by hollowed end in spindle, said hollowed end being preferably fitted with ball bearings to enable the said independent piece to revolve with friction when it is in contactual reJationship with the utensil. This independent piece may have forward pointed end or said forward end may be blunt end, the pointed end or the blunt end as the case may be, being finnly held against the utensil. The blunt end may, e.g. be of 1 cm. in diameter."

(Emphasis added)

Then, at the foot of the complete specification, 9 Claims are set out, which read as under :

"!. Means for mounting and holding metal utensils more particularly of the shallow type for the purpose of turning be-fore polishing comprising shaft or spindle carrying at its one end and adapter having face corresponding to the shape of the article or utensil to be held, the utensil being maintained in held position by an independent pressure on the utensil when s~ated on the adapter.

2. Means for the purpose herein setforth end as claimed in Claim I in which the pressure spindle is adapted to pass through guide block and has regulating handle at the outer end ,,the inner end of the, spindle pressing against the utensil, means being provided to set and lock the pressure spindle in any desired position.

3. Means as claimed in Claims 1 and 2 in which the pres-sure end of the pressure spindle is rotatably mounted and !or this purpose it comp~ an independent piece engaged by

hollowed end in spindle, said hollowed and end being prefer-ably fitted with ball bearings to enable the said independent piece to revolve with friction when it is in contractual rela-tionship with the utensil.

4. Means as claimed in previous claims in which the pres-sing or inner end of the pressure spindle is pointed or blunt.

5. Means as claimed in Claim 1 in which the pressure spin-dle passes through bracket or the like end said bracket may comprise the arm of an angle shaped bracket whose other arm may be fixed to stand or the like.

6. Means as claimed in Claim's 1., 2 & 3 in which the pres-sing end of the spindle may be fixed end or revolving end.

7. Means as claimed in Claim 1 in which the adapter is shaped to seat the utensil.

8. Means as claimed in Claim 1 in which the adapter is made of wood or any other material.

9. Means for holding the utensil for the purpose herein setforth and substantially as described and illustrated and uten-sils so turned."

As pointed out in Arnold v. Bradbury(') the proper way to construe specification is not to read the claims first and then see what the full description of the invention is, but first to read the description of the invention, in order that the mind may be prepared for what it is, that the invention is to be claimed, for the patentee cannot claim more than he desires to patent. In Parkinson v. Simon([2 ]) Lord Esher M. R. enunciated. that as far as possible the claims must be so construed as to give an effective meaning to each of them, but the specification and the claims must be looked at and construed together. The learned trial Judge precisely followed this method of construc-tion. He first construed and con'sidered the description of the inven-tion in the provisional and complete specification, and then dealt with each of the claims, individually. Thereafter, he considered the claims and specification as whole, in the light of the evidence on record.

With regard to Claim No. 1, the learned Judge commented :

"The pressure spindle in lathe is well known contri-vance. Pressure spindle or tailstock was in use in this in-(1) (1871) 6 Ch. A. 706. (2) (1894) 11 R.P.C. 483.

'-<Ir ,r

r I.•I -• -

.Ill

~ I¥.< . " "

¥.< . " "

• • .. ,.

Ill i"' ~j; .. •t:;

dustry much before 1951. So neither the means for mounting and holding metallic utensil nor the independent pressure' spindle can be said to be an invention".

In Claims 3, 4, 6 and 7, also, he found uo novelty or inven-tive step having regard to the fact that these were well-known and were in use long before 1951. Regarding Claim No. 5, he found that the use of the bracket wa·s new; but tl1e end bracket can hardly be said to be, an invention.

The learned trial Judge then noted that Purshottam, who was stated to be the inventor, and, as such, was the best person to describe the invention, did not appear in the witness-box, though, as admitted by Sotam Singh (D.W. 3), Purshottam had attended on some dates of hearing. Sotam Singh tried to explain Purshottam's disappearance from the Court without appearing in the witness-box, by saying that he had gone away due to illness. The learned Judge found this explana-tion unsatisfactory and rejected it-and in our opinion rightly-with the remark that recording of evidence lasted for several days and it was not difficult to secure Purshottam's attendance. Apart from being the best informed person about the matter in issue, Purshottam was not strang'Cr. He was a. partner of the patentee finn and brother of Sotam Singh (D.W. 3). He was the best informed person who might have answered the charge of lack of novelty levelled by the opponent oidc, by explaining what was the novelty of the alleged invention and how and after, what research, if any, he mai:le this alleged 'discovery'. Being partner of the respondent-firm and personally knowing all the circum-stances of the case, it was his duty as well as of the respondent-firm, to examine him as witness so that the story of, the particular invention being new manufacture or improvement involving novelty, could, in all its aspects, be subjected to cross-examination. By keeping Pur-shottam away from the witness-box, the respondent-firm, therefore, took the heavy risk of the trial Court accepting the charge of lack of novelty made by the appellant herein.

The trial Judge further noted that the witnessc• examined by the patentee-firm had given garbled, account as to the patented invention. The witnesses were speaking with discordent voices as to the alleged in-ventive step involved in the patent. Mata Parashad (D.W. 2) stated the invention lies in fixing the Charhi on the pointer on the same iron base. In \'ariance with it, Sotam Singh (D.W. 3) said that his patent covers three factors-the side supporting iron plate, the pointer with the nut, and the adapter. In this connection, we may add that Lakshmi J !-40SCf /79

Dass (D.W. 1) another witnes·s examined by the patentee-firm, had ad-mitted that machines like Ex. XVI (which was the machine produced by Bhagwati Prasad and was alleged by the patentee to be an imitation of the patented one), were in use even before 1951-52.

After critical appraisal of the evidence produced by the parties, the learned trial Judge found that manufacturers in the industry have been using adapters of various sizes and shapes to suit the article hand-led; that tailstock or pointer was also in use; that it was common prac-tice to fix the headstock and tailstock permanently to single frame-work. In regard to the use of the bracket or angle in Ex. CC, the learned J udgc held that although it was new, it was not new idea, and con-cluded : "There is hardly any difference between fixing the headstock 6nd tailstock to common base (as the case in the machine Ex. XVI produced by Bhagwati Prasad) or fixing the tailstock in bracket which is connected with the framework on which the headstock is fixed. Whether we consider Ex. CC as whole or look at the invention in its separate parts, we do not find any novelty in the alleged invention."In our opinion, the findings of the learned trial Judge to the effect that the patent is not manner of new manufacture or improvement, nor does it involve. any inventive step having regard to what was known or used prior to the date of patent, should not have been lightly disturbecl by the Appellate Bench. These were, as already observed, largely find-ings of fact, based on appreciation of the evidence of witnesses and the trial Court had the. initial advantage of observing their demeanour in · the witness-box. Moreover, the approach adopted by the trial Court was quite in conformity with the basic principles on the subject, noticed in an earlier part of this judgment. The patented machine is merely an application of an old invention, known for decades before 1951, for the traditional purpose of ·scraping and turning utensils,. with slight change in the mode of application, which is no more than 'workshop improvement', normal development of an existing manner of manufac-ture not involving something novel which would be outside the probable capacity of craftsman. The alleged discovery does not lie outside the Track of what was known before•. It would h"ave been obvious to any skilled worker in the field, in the state of knowledge existing at the date of patent, of what was publicly known or practised before about this process, that the claim in question viz., mere addition of lever and bracket did not make the invention the subject of the claim concerned. There has been no substantial exercise of the inventive power or innova-tive faculty. There is no evidence that the patented machine is the

result of any research, independent thought, ingenuity and skill. Indeed, Sotam Singh frankly admitted that hfl did not know whether Purshottam had made any research or any experiments to prodnce this combination. Nor does this combination of old integers involve any novelty. Thus judged objectively, by the tests 'suggested by authorities, the patent m question lacked novelty and invention.

We will close the disc4ssion of trial Court's Judgment by referring to decision of the House of Lords in Harwood v. Great Northern Dy. Co.(') as, in principle, that case is analogous to the one before us. In that case, person took out patent, which he thus described : "My invention consists in forming recess or groove in one or both sides of each fish (plate), so as to reduce the quantity of metal at that part, and to be' adapted to receive the square heads of the bolts, which are thus prevented from turning round when the nuts are screwed on." His claim was "for constructing fishes for connecting the rails of railways, with groove adapted for receiving the ends of !he bolts employed for securing such fishes; and the application. of such fishes for oonnecting the ends of railways in manner hereinbefore described. The construct-ing of fish joints for connecting the rails of railways with grooved fishes fitted to the sides of the rails, and secured to them by bolts or nuts, or rivets, and having projecting wings firmly secured to and resting upon the sleepers or bearers, so as to support the rails by their sides and upper flanges." lt was proved that before the date of his patent, fish-joints had been used to connect and strengthen the rails of railways. In some cases, the fishes were flat pieces of iron, with round holes for bolts, the heads of the boltS being held in their places by separate means. In others the extreme ends of the holes were made square and the bolt-heads square, to put into them, and, in some, square recesses were made in the flat pieces of iron for the same purpose; but, till the time of the patent, fishes for connecting the railways had never been made with groove in their lateral ·surfaces so as to receive the ,square heads of the bolts, and render the fish lighter for equal strength, or stronger for an equal weight of metal."On these facts, it was held that what was claimed as an invention was not good ground to sustain patent. Blackburn L. J., succinctly summed up the. rule of the decision, thus :

"In order to bring the subject-matter of patent within this exception, there must be invention 'so applied as to produce practical result. And we quite agree with the Court of Exche-

(1) (1864-65) XI H.L.C. 654.

quer Chamber that mere application of an old c,ontrivance in the old way to an analogous subject, without any rwve/ty or invention in the mode of applying such old contrivance to the new purpose, is not valid subject-matter of patent."

The above enunciation squarely applies to the facts of the present case. We will now con.sider the judgment of the Appellate Bench, which, it may be recalled, has found that the novelty and invention of the patent lay in "the method of holding an article by the pressure of point of pointed tailstock (which) was neither u'sed or known."

This finding, if we may say so with respect, is inconsistent with the Appellate Bench's own findings Nos. (5) and (6), the consolidated su~tanco of which is to the affect, that lathe consisting of headstock and tailstock and its uses for centering the article, holding along work by pointed tailstock by pivoting it and holding an article in metal spin-ning by the pressure of pad attached to the tailstock, have been well known for long time. Finding No. (7) of the Appellate Bench goes beyond the scope of the specifications and claims made by the patentee, himself, in the subject of the patent. From perusal of the specifica-tion and the 'claims', extracted earlier, it is evident that there is no as-sCJ:tion therein, af novelty for the pointed tailstock; rather it is stated that "the pressure spindle may be pointed or blunt." Furthermore, this finding of the Appellate Bench stands in contradiction to what Sotam Singh (D.W. 3) patentee himself has admitted in the witness-box. In cross-examination, Sotam Singh (D.W. 3) said : "I am not using any other pointer than that of Ex. CC. I never used pointer of any other type. I have not used any rotating pointer either at Banaras or at Mirzapur ..... If any bGdy uses wooden adapter in chuck and does scraping work on Katore in such wooden chuck without pointer, thece would be no infring,ement of my patent.. . I conducted no ex-periments before obtaining the patent. l do not know what kind ol experiments Purshottarn carried out. I have got no apparatus for scrap-ing utensils except like Ex. CC." Sotarn Singh further a<tnitted that machines like Ex. XVI (the one which was produced by the appellant and i~ ftaid to infringe the patent of the respondent-firm) are sold in th~ rrulrket and one can purchase pointer like Ex. XI in lathe.

In the face of the admissions of the representative of the patentee, it was not possible for the Court to work out Finding No. (7) on its own, without allowing itself to get into the unenviable position of appear-ing, more Royalist than the King. We have ourselves examined and compared the machines (Ex. CC and Ex. XVI) . We find that the tailstock in each of these machines has blunt end of slightly above 1

cm. in diameter. It may be re-emphasised that according to Sotam Singh, himself, his patented machine has no other end of tailstock excepting of the (bunt) type in Ex. CC.

of tailstock

For all the reasons aforesaid, we have no hesitation in holding that the learned Judges of the Appellate Bench were in error in reversing the findings of the trial Court on Issues 1 and 1-A. The learned trial Judge was right in holding that the' patented maclline was neither manner of new manufacture or novel improvement, nor did it involve any inven-tive step, having regard to what was publicly known or used at the date of the patent. The grant of the patent in question was therefore, invalid and was liable to be revoked on the grounds mentioned in Clauses ( d) and ( e) of Section 26 (1) of the Act.

Before parting with this judgment, we will like to dispose of another argument of Mr. Mehta. The argument is that since the Courts below have concurrently held that the invention had utility, the patent should be sustained. We are unable to accept this contention. As pointed out already, the crucial test of the validity of patent is whether it in-valves novelty and an 'inventive step' ? That test goes against the patentt:e.

In the result, the appeals are allowed, the judgment of the Appellate Bench is set aside and that of the trial Court restored. ~n the peculiar circumstances of the case, the parties are left to bear their own costs ~ throughout.

Appeals al'owed,