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R. Prakash Vs. Chowdhary Plastic Works - Court Judgment

LegalCrystal Citation
SubjectCivil
CourtDelhi High Court
Decided On
Case NumberCivil Contempt Case No. 31 of 1978
Judge
Reported in15(1979)DLT82
ActsCode of Civil Procedure (CPC), 1908 - Order 39, Rule 2A
AppellantR. Prakash
RespondentChowdhary Plastic Works
Cases ReferredIn J. Roeld Leman v. Krentler
Excerpt:
.....and the claims made by the plaintiff for the grant of the patent in question it is clear that the plaintiff was granted patent with respect to the method of producing a printed film as well as the printed film......for permanent injuction restraining the defendant from making, manufacturing, and selling printed film disc (prepared in segments or otherwise) and from selling any viewer using such printed film disc, which are covered by the plaintiff's patent no. 125113 of 1970; (b) the defendant be directed to deliver up and hand over to the plaintiff 'for destroying the same, all the finished goods manufactured by the defendant in violation of the patent rights of the plaintiff covered by patent no. 125113 of 1970, together with all the moulds, dies, jigs, fixtures and fittings used for the purposes of making and manufacturing the infringing goods, and to deliver up all goods in the process of making, and all other implements and instruments that are used or likely to be used by defendant for.....
Judgment:

Sultan Singh J.

(1) On 13-6-1977, notice was given to Mr. Mangat Ram Chaudhary, proprietor of M/s. Chaudhary Plastic Works, defendant to show cause why his property should not be attached, and he be detained in civil prison under Rule 2-A of Order 39 of the Code of Civil Procedure (as inserted by Act 104 of 1976). This order will dispose of the said show cause notice.

(2) The plaintiff was granted patent No. 125113 of 1970 with respect to a method of producing a printed film and a printed film produced thereby from 35 mm cinematograph film strips in the ships of a circle or disc which is capable of being used in a specially adopted viewer. The images of this disc lie on a path defining a circle. The claims as mentioned in the said patent are under :-

'(i) A process of production a printed film comprising the steps of exposing in a spaced relation a plurality of images on a length of a negative film, said length being twice the height of said film, said images lying on a path defining a semi-circle, and thereafter printing the said film on a positive film; (ii) A process as claimed in claim (i) which comprises the steps of exposing and printing a second said film having images thereon different to the images on said first film, and joining first and second film and such that the images on a path defining a complete circle. (iii) A prosess of producing printed film substantially as herein described and illustrated. (iv) A printed film whenever made by a process as claimed in claims (i) to (iii).'

The plaintiff on 19-6-1976 filed this suit for the following reliefs beside others:-

'(a) A decree for permanent injuction restraining the defendant from making, manufacturing, and selling printed film disc (prepared in segments or otherwise) and from selling any viewer using such printed film disc, which are covered by the plaintiff's Patent No. 125113 of 1970; (b) The defendant be directed to deliver up and hand over to the plaintiff 'for destroying the same, all the finished goods manufactured by the defendant in violation of the patent rights of the plaintiff covered by patent No. 125113 of 1970, together with all the moulds, dies, Jigs, fixtures and fittings used for the purposes of making and manufacturing the infringing goods, and to deliver up all goods in the process of making, and all other implements and instruments that are used or likely to be used by defendant for infringing the plaintiff's said Patent No. 125113 of 1970 that may be in the possession and power of the defendant : (e) A preliminary decree for accounts be passed in favor of the plaintiff and against the defendant and the defendant be directed to render true and correct accounts of all the goods made by and/or sold by him and all profits earned by him by and through the manufacture and sale of the infringing goods commencing from 3-2-1970 or such other date as may be fixed by this Hon'ble Court.'

(3) The plaintiff alleges that the defendant has produced a printed film disc infringing his rights and he continues to infringe the patent rights of the plaintiff? that the defendant is liable to be restrained, from manufacturings production, marketing and selling goods, produced by him by infringing the patent; that by virtue of Section 48 of the Patent Act 1970 the plaintiff has the exclusire right to make the said film under the patent. The plaintiff also filed an appplication (I.A. 1319/76) for restraining the defendant from making, manufacturing and selling printed film disc and viewers covered by patent 125113 of 1970 till the decision of the suit,

(4) On 21-6-1976, Yogeshwar Dayal J., issued summons of the suit and notice of injunction application to the defendant for 23-8-1976 and also passed the following exparte order of injunction :-

'In the meanwhile the defendant is restrained from making, manu- facturing and selling the patent film disc and viewers covered by patent No. 125113 of 1970'.

On 23-8-1976 the said ex-pane injunction was ordered to remain in operation till further orders and on 3-6-1977 it was made absolute, as the defendant on that date stated before the court that he was not manufacturing or selling any printed film disc and viewers covered bypatent No. 125113 of 1970. On 13-6-1977 the defendant also made the following statement on oath before this court :-

'The pink viewer on the back of which the words and figures PAT/PEN/CAL/726/76' are engraved, has been manufactured by me (for the purpose of identification it is marked as Article 'X'). This is also known as 'Mec Viewer'. The carton in which this viewer is sold is Article 'X/A). About a month and a half or two ago I have stopped manufacturing the body of this 'Mec Viewer' though I continue to manufacture the film disc which I am now using in 'Munna Viewer, I am manufacturing 'Munna Viewer'. 'Munna Viewers' is marked as Article 'X-1 while its carton is marked as Article 'X-1/A'.'

(5) V.D. Misra, J, on 13-6-1977 issued notice to the defendant to show cause why b's property should not be attached and he be detained in civil prision for disobedience of injunction. The defendant filed his reply dated 14-7-1977 to the show cause notice. He says that his method of production of film disc is different from that of the plaintiff, that his method of production is not covered by plaintiff's patent, that the production of a firm disc in a manner different from that of the plaintiff is not a breach of injunction, that the manufacturing of the viewer is not an infringement of the patent as the same is not covered by the patent granted to the plaintiff and that the ex parte injunction granted on 21-6-1976, extended by order dated 23-8-1976, and made absolute by order dated 3-6-1977 is illegal and without jurisdiction.

(6) It is argued by the learned counsel for the defendant that the film disc prepared by the defendant is different from the film disc prepared by the plaintiff according to the specifications and the claims mentioned in his patent, that his patent is not a now or useful invention, that the patent pertains to the process of printing a film only, that the film disc prepared by the defendant is filmed from an ordinary cemera while the film used in the disc by the plaintiff is filmed by a special cemara, The methods of exposing and making the films by the plaintiff and the defendant are alleged to be different. It is admitted that defendant was previously manufacturing the film disc of 48 mm of four segments and that later on he prepared film disc of six segments only up to the time i.e. July 1977 when the disc in his possession used for manufacturing the film disc were deposited with the Registrar of the Court.

(7) Admittedly no appeal was filed against the injunction order. The defendant thus has no right to challenge the order in these proceedings for disobedience of injunction. It is not disputed that this court has jurisdiction to grant the temporary injunction order dated 21-6-1976. It is well known that so long as the order of Court is in operation it has to be obeyed till the same is modified by a competent court of law. In United State v. United Mine Workers of America, 330 U.S, 258 (91 Le 884) it has been held as follows -

'Head note 13 : In the case before us, the District Court had the power to preserve existing conditions while it was determining it sown authority to grant injunctive relief. The defendants, in making their private determination of the law, acted at their peril. Their disobedience is punishable as criminal contempt.'

'Head note 14 : Proceeding further, we find impressive authority for the proposition that an order issued by a court with jurisdiction over the subject matter and person must be obeyed by the parties until it is reversed by orderly and proper proceedings. This is true without regard even for the constitutionality of the Act under wdich the order is issued.'

'Headnotes 25/26: the interests of orderly government demand that respect and compliance be given to orders issued by courts possessed of jurisdiction of persons and subject matter. One who defies the public authority and willfully refuses his obedience, does so at his peril. In imposing a fine for criminal contempt, the trial judge may properly take into consideration the extent of the willful and deliberate definance of the court's order, the seriousnes of the consequences of the contuinious behavior, the necessity of effectively terminating the defendant' definance as required by the public interest, and the importance of deterring such acts in the future. Because of the nature of these standards, great reliance must be placed upon the discretion of the trial judge. The trial court properly found the defendants guilty of criminal contempt. Such contempt had continued for 15 days from the issuance of the restraining order until the finding of guilty'

'Headnote 27 : The trial court also properly found the defendants guilty of civil contempt. Judicial sanctions in civil contempt proceedings may, in a proper case, be employed for either or both of two purposes ; to coerce the defendant into compliance with the court's order, and to compensate the complainant for losses sustained.'

It has been held by the Supreme Court of India in The Slate of Bihar v. Rani Sonabati Kumari, : [1961]1SCR728 as follows :

'When once an order has been passed which the court has jurisdiction to pass, it is the duty of all persons bound by it to e bey the order so long as it stands and it would tend to the subversion of orderly ad- ministration and Civil Government, if parties could disobey orders with impunity.'

The defendant did not file any appeal against the order making the . ex parte injunction absolute and now it does not lie in his month to say that the injunction order was not in accordance with law or was without jurisdiction. He is bound to obey the order.

(8) From the specifications and the claims made by the plaintiff for the grant of the patent in question it is clear that the plaintiff was granted patent with respect to the method of producing a printed film as well as the printed film. There does not appear to be any essential difference in the methods of producing a printed film discs by the plaintiff and the defendant. The plaintiff, however, prepares the printed film disc having two segments of a circle and the defendant prepares the film disc having four or six segments. By whatever method the film disc has been produced the resultant product is the same i.e. the printed film disc having various pictures lying on a path defining a circle. The patent granted to the plaintiff is also with respect to the film disc itself and as such if the defendant has prepared the film disc by a method which is not materially different from the method used by the plaintiff, I am of the opinion that the defendant has infringed the patent.

(9) The defendant in his statement dated 13thJui-.e, 1977 before this court also admitted that he was manufacturing the 'Mec Viewers' up to two months before the date of his said statement and that he had been continuing the manufacture of the film disc, which he was using in 'Munna Viewer'. Munna Viewer is marked as Article 'X-1 'which contains the film disc. Manufacturing of the film disc used in Munna Viewer is a willful disobedience of the injunction order dated 21st June, 1976. On 3rd June, 1977 the defendant stated before the court that he was not manufacturing or selling any printed film disc or Viewers covered by the patent granted to the plain tiff but on 13th June, 1917, he admitted before the court in unmistakable terms that he was manufacturing the film disc which he was using in Munna Viewers. The Munna Viewer and the film disc used in this Viewer is nothing but an infringement of the patent granted to the plaintiff and thus disobedience of injunctions. In Union Tool Company v Elibu C. Wilson 259 U.S. 107 (66 Lawyers' Edition 848) the Supreme Court of United States observed as follows :-

'The sale by an infringer of a patent, after service of injunction, of spare parts for use in and repair of infringing machines markted by the. infringer before service of such injunction, such parts being of such a nature that, when used in combination, they will effect an infringement, violates the injunction, where the patentee has not received any compensation for the infringement by the use of these machines, and there was consequently no implied license to use the spare parts in them.'

The defendant admittedly using and selling film disc and hence he violated the injunction.

(10) In Raj Parkash v. Mangat Rom Choudhary & Others,) : AIR1978Delhi1 which is a case between the parties to the present litigation in connection with another patent No. 111926 of 1967, the patent related to a medially cut positive 35 mm printed film, and its use in combination with Viewers specially adopted for the use of such medially cut strips, so as to get a virtual image of the same size as the virtual image of normal 35mm frame. The Division Bench observed as follows :-

'where the claims stated at the end of specifications in the patent are alleged to have been infringed the Court should construe the claims without reference to the body of the specifications and refer to the specifications only if there is any ambiguity or difficulty in the construction of the claims in question. To find out whether the patent has been infringed the patented article or process has to be compared with the infringing article or process and unessential features in the infringing article or process are of no account and if the infringing goods are made with the same object in view which is attained by the patented article, then a minor variation does not mean that there is no piracy and a person is guilty of infringement if he makes what is in substance the equivalent of the patented article and some trifling or unessential variation has to be ignored.'

Considering the principle of interpretation of specifications and the claims of the patent granted to a partly as stated above, I am of the view that on the same principles it cannot be said that the minufacturing, making or selling of the film disc by the defendant is not an infringement of the patent granted to him with respect to which the temporary injunction was issued by this court on 21st June, 1976.

(11) SUB-RULES (3) and (4) of Rule 2 of Oeder 39 of the Code of Civil Procedure, before amendment by Act No. 104 of 1976 were as under :-

'(3) In case of disobedience, or of breach of any such terms, the Court granting an injunction may order the property of the person guilty of such disobedience or breach to be attached, and may also order such person to be detained in the civil prison for a term not proceeding six months, unless in the meantime the Court directs his release. (4) No attachment under this rule shall remain in force for more than one year, at the end of which time, if the disobedience or breach continues, the property attached may be sold, and out of the proceeds the Court may award such compensation as it thinks fit, and shall pay the balance, if any, to the party entitled thereto.'

These sub-rules (3) and (4) were, however, omitted by Act 104 of 1976 and the following Rule 2 A was added to Order 39 of Code of Civil Procedure :-

'2A. (1) In the case of disobedience of any injunction granted or other order made under rule I or rule 2 or breach of any of the terms on which the injunction was granted or other order made, the Court granting the injunction or making the order, or any Court to which the suit or proceeding is transferred, may order the property of the person guilty of such disobedience or breach to be attached, and may also order such person to be detained in the civil prison for a term not exceeding three months, unless in the meantime the Court directs his release. (2) No attachment made under this rule shall remain in force for more than one year, at the end of which time, if the disobedience or breach continues, the property attached may be sold and out of the proceeds, the Court may award such compensation as it thinks fit to the injured party and shall pay the balance, if any, to the party entitled thereto.'

There is not much difference in the above provisions of order 39 before and after amendment, by Act 104 of 1976, Previously the 'Civil Prison' terms was not to exceed six months, but after the amendment it has been reduced to three months.

(12) Considering the facts and circumstances of the present case, I have no hestitation to hold that the defendant has willfully disobeyed the injunction granted by this Court on 21st June, 1976 and that he has been continuing to do so initially by preparing the printed film disc of four segments and subsequently of six segments. The attitude adopted by the defendant with respect to the method of producing his film disc and his claim that the printed film disc and manufactured by him is not covered by the patent granted to the plaintiff discloses his willful intention to disobey the injunction. For the sake of maintaining dignity of the court and for the enforcement of its orders from time to time, it is necessary that severe action must be taken against the defaulters. This is a case where the defendant is insisting to disobey the injunction by manufacturing and selling the film disc of which patent has been granted to the plaintiff and as such it would not be harsh if the defendant is detained in the civil prison for a term of three months.

(13) By the infringement of patent, the plaintiff is bound to suffer loss. The defendant also infringed the patent with a view to make profit. In J. Roeld Leman v. Krentler-Arnold Hinge Last Company 284 U.S. 448 (76 Lawyers' Editition 389) the Supreme Court of United States observed as follows :-

'PROFITSderived from the violation of an injunction against infringement of a patent may be decreed to the injured party, in a civil contempt proceeding based on such violation.'

It would thereforee further be in the interest of justice that the property of the defendant, who is guilty of willful disobedience of the injunction be also attached. I am informed by the learned counsel for the plaintiff that in a connected litigation, the defendant has filed statement of accounts showing that he sold the viewers containing the film disc in question of the value of Rs. 45.000.00 during the period from May, 1976 to Dec. 1977. He has not brought to my notice the accounts of sale for the subsequent period. At the moment I am not in a position to determine what loss the plaintiff has suffered on account of disobedience of the injunction by the defendant. The question of compensation that may be awarded to the plaintiff is, thereforee, left open with a direction that the plaintiff may take steps for determination of the compensation.

(14) Under the circumstances I direct that the defendant be detained in the civil prison for a term of three months that he be taken into custody and that his properties movable and immovable be attached in accordance with Order 39, Rule 2-A read with relevant rules of Order 21 of the Code of Civil Procedure.


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