PRESIDENCY UNIVERSITY

INTELLECTUAL PROPERTY RIGHTS-II

ASSIGNMENT
TEAM: 1
TOPIC: FILAC Analysis of the given problems.
NAMES: ADARSH RANA, HEMAN GURUNG, K.A.NITHIN
KISHORE & KRITI DIWEDI
ROLL NOS.: 20191BAL0008, 20191BAL0026,
20191BAL0032 & 20191BAL0038
SUBMITTED TO: PROFESSOR ANCY P ANTO
DATE OF SUBMISSION: 13.03.2023
COURSE CODE: LAW 408
Question-1:
Bajaj Automobile Limited filed a suit under section 108 of the Patent Act, 1970 for the
relief of permanent injunction in respect of plaintiff’s patent and/or for the technology/invention
described in the patent and/or manufacturing, marketing, selling, offering for sale, for exporting
2/3 wheelers including the proposed 125CC flaunt containing an internal combustible engine or
any internal combustible engine or any product which infringes the plaintiff’s patent claiming of
damages for infringement of the plaintiff’s patent. Pending the said suit, the plaintiff prays for the
order of temporary injunction restraining the respondent from any manner infringing the applicants
patent.
Plaintiff in another suit, TVS Motor Company, filed the suit on the basis of groundless
threat of infringement under section 106 of the Patent Act, 1970 for declaring that the threats held
by the defendant’s patents and that the defendant is proposing to take the infringement action is
against the plaintiff which is unjustified and also for permanent injunction restoring the defendant
with respect to the launch and sale of the launch and sale of the product, TVS Flame. Apart from
directing the defendant to compensate the defendant for the damages sustained an account of
unjustified threat made by the plaintiff, file for an interim injunction restraining the respondent
from interfering with the manufacturing and sale of the applicant’s product.
Except the use of 3 valves the product which was attempted to the marketed by the
respondent was prima facie similar to the applicant’s patented product.

Facts:
The plaintiff Bajaj Automobile Limited files a suit of infringement for the permanent injunction
against TVS Motor Company because the plaintiff proposed that the 125CC flamed motor cycle
containing internal combustion engine was similar to the respondent’s product except the use 3
barrels. The product which was marketed by the respondent was prima facie similar to that of the
applicant’s product.
Issues:
1. Whether the product made by TVS Motor company passes the test of non-
obviousness(Graham’s Test).
2. Whether the product made by or advertised by the respondent qualifies the novelty, utility
and non-obviousness Test (NUN- Test).

Laws:
According to the given facts the following legal provisions of Patent Act, 1970 are applicable:
1. Section-2(1)(j)- Invention
2. Section-2(1)(ja)- Inventive Step
3. Section-2(1)(l)- New Invention
4. Section-2(1)(m)- Patent
Precedents supporting the given facts are:
1. Graham v. Jhon Derre
2. Novartis A.G. v. Union of India

Analysis:
According to the ingredients of the Section-2(1)(j) of the Patent Act, 1970, are as mentioned below.
Invention includes:
a) New product or process
b) Inventive steps
c) Industrial application
As in relation to the given facts of the case since the plaintiff had already invented the new
product(125CC flamed motor cycle) containing the internal combustible engine is prima facie
similar to the product given which the respondent advertised. Therefore, it is not a new product as
it was already invented. Although, it does have the inventive step as TVS has added 3 barrels to
the already existing model of Bajaj.
As according to the main ingredient of Section-2(1)(m), Patent is any invention granted Patent
under the Patent Act,1970. Since there was already an existing product similar to the respondent’s
product novelty was not present in the product according to the NUN Test which includes: novelty,
utility and non-obviousness. There is an absence of novelty and non-obviousness. In the case of
Graham v. Jhon Derre, the question of non-obviousness was raised offer under Graham’s Test
was introduced in which seven ingredients for qualifying the test of non-obviousness was
introduced. There were 4 conditions to qualify this test. Later 3 conditions were added. The
conditions are:
1. The scope and content of the prior art.
2. The level of ordinary skill in the prior art.
3. The difference between claimed invention and prior act.
4. The evidence of non-obviousness.
The additionally added conditions are:
5. Commercial success.
6. The long unsolved need.
7. The failure of others.
Using the Graham’s Test for obviousness, the product of the respondent clearly fails the first
condition as the prior art was already existent. The difference between the defendant’s invention
and the plaintiff’s invention is only the addition of 3 barrels to the existing prior art. Therefore,
since all the ingredients of the test is not satisfied, the product of the respondent fails the Graham’s
Test for Non-Obviousness. Further in the case of Novartis A.G. v. Union of India, it was held that
the invention has to be novel to get patented which is not here in the respondent’s product in which
the plaintiff has already patented a similar product.

Conclusion:
In the light of the arguments advanced it is contended that the defendant’s product, TVS Flamed
is infringing the rights of the Patent of the Plaintiff. Therefore, it can be considered that the
defendant shall compensate the plaintiff in the form of damage for the damages caused and grant
order for permanent injunction against the defendant shall be passed.
Question-2:
TATA suited HONDA alleging that HONDA had infringed on its Patent for an adjustable
accelerated paddle and an electronic throttle control, HONDA countered that TATA patent was
obvious and therefore, unenforceable. Under 25 of the Indian patent number the said patent that
was patented. HONDA’s argument that the invention was obvious, because each of the invention
component existed in previous patents they contended that anyone with knowledge or experience
in the industry would have consider it obvious so that the two components of the patent could be
combined. Submit your argument on the basis of existing facts.

Facts: -
TATA suited HONDA alleging that HONDA had infringed on its Patent for an adjustable
accelerated paddle and an electronic throttle control, HONDA countered that TATA patent was
obvious.

Issue: -
1. Whether TATA’s product is obvious or not as according to HONDA’s argument.
2. Whether HONDA has infringed the Patent right of TATA or not.

Laws: -
According to the given facts the following legal provisions of Patent Act, 1970 are applicable:
1. Section-2(1)(l)- New Invention.
2. Section-2(1)(m)- Patent.
3. Section-2(1) (ja)- Inventive Step

Precedents supporting the given facts are:

1. Graham v. Jhon Derre
2. Dhanpath Seth v. NIL Kamal Plastic

Analysis: -
According to the ingredients of the Section-2(1)(m) of the Patent Act, 1970, are as mentioned
below. Patent means:
• Invention
 • Granted under the Patent Act,1970
As in relation to the given facts of the case since TATA has already obtained the patent for
adjustable accelerated paddle and an electronic throttle control, therefore it can be assumed that
the product must have fulfilled the mentioned condition which can also be supported with the
definition of ‘ New Invention’ as mentioned under Section-2(1)(l) of the Act. As its main
ingredients are:
• Invention involves technical advance
• That makes invention Non obvious to a person skilled in art.
Since, TATA’s product have already got the patent, therefore the above mentioned ingredients are
fulfilled. Also, In the case of Graham v. Jhon Derre, the question of non-obviousness was raised
offer under Graham’s Test was introduced in which seven ingredients for qualifying the test of
non-obviousness was introduced. There were 4 conditions to qualify this test. Later 3 conditions
were added. The conditions are:
1. The scope and content of the prior art.
2. The level of ordinary skill in the prior art.
3. The difference between claimed invention and prior act.
4. The evidence of non-obviousness.
The additionally added conditions are:
1. Commercial success.
2. The long unsolved need.
3. The failure of others.
Using the Graham’s Test for obviousness, the product of HONDA does not fulfill the mentioned
condition since TATA’s product have the patent. In the case of Dhanpath Seth v. NIL Kamal Plastic
It was held that mere substitution of components cannot be given patent as in the present case
patent has already been given to TATA therefore, HONDA cannot apply for the patent.

Conclusion: -
In the light of the arguments advanced it is contended that TATA’s product has passed the test of
Non obviousness, as they have been given patent. Therefore, it can be said that HONDA have
infringed the patent of TATA on the product of an adjustable accelerated paddle and an electronic
throttle control.