In M.C. Jayasingh v. Mishra Dhatu Nigam Ltd. & Ors. the division bench of the Madras High Court dismissed an appeal filed by the Appellant - Plaintiff against the decision of a Single Judge disallowing the interlocutory application of the Plaintiff.
The facts in brief are as follows: The Appellant – Plaintiff had filed an infringement suit against the Respondents – Defendants on the ground that the latter were infringing his patents for prosthesis, more specifically, Custom Mega Prosthesis - Knee Joint Prothesis (subsequently referred to as ‘CMP-KJP’). The prosthesis, made of titanium alloy or medical grade stainless steel, were manufactured and marketed by the Appellant as CMP – KJP and were used in limb salvage surgery.
In his infringement claim, the Plaintiff - Appellant stated that for manufacturing prosthesis he use to purchase titanium from the First Respondent - Defendant, Mishra Dhatu Nigam Limited (MIDHANI), who is the sole producer of titanium products in the country. Issues arose when, after a passage of time, the First Respondent refused to supply titanium alloy to the Appellant and post this refusal the First Respondent, in partnership with the Second Respondent, Apollo Hospitals, began to manufacture and sell prosthesis, marketed as “Apollo Midhani Prosthesis” to hospitals, including Apollo Hospitals. The Appellant became aware of the First Respondent’s alleged infringing activities through a newspaper report on such limb salvage surgeries conducted by doctors of Second Respondent, wherein it was stated that they purchased the prosthesis from the First Respondent.
Furthermore, the Appellant also contended that he had been supplying CMP-KJP to the Fourth Respondent, namely, Cancer Institute (W.I.A.), Regional Cancer Centre, Adayar, Chennai. However, in spite of the fact that limb salvage surgery is continued in the Cancer Institute, all of a sudden, the Fourth Respondent stopped the placement of order for the prosthesis virtually without any reason. Thus, presumably the institute was manufacturing and producing the concerned invention internally.
On these grounds, the Appellant contended that Respondents 1 to 4 were making, using, selling and distributing the patented CMP including CMP-KJP by infringing his monopoly rights and asked for an injunction against the Respondents.
The Respondents in turn challenged the validity of the patent and claimed that the prosthesis used by them was dissimilar to that of the Appellant’s. They further contended that their prosthesis was significant improvement over the Appellant’s version and was also more affordable. It is pertinent to note that the stated price difference was significant, the Appellants’s prosthesis cost Rs. 1,36,000/-, as against the First Respondent's rate of Rs.39,200/-. Respondent No. 1 also argued that it was his titanium implants which made prosthesis, earlier available only in super speciality hospitals, affordable for the common man.
As stated earlier, the Single Judge dismissed the application for temporary injunction filed by the Appellant and the matter was being heard by the division bench on appeal.
The division bench applied the three parameters of (1) Prima Facie case (2) Irreparable Injury and (3) Balance of Convenience to the facts at hand and concluded that the Appellant failed to satisfy any of the criteria.
As regards prima facie case the court held that each CMP-KJP was made as per the specifications and requirements of the patient. Hence, the fact that the Appellant has patent over one model of CMP – KJP cannot entitle him to claim protection over variations of such model. Moreover, on examining the two models, the judges stated that the two models were visually dissimilar and functional similarity alone does not establish a prima facie case. It was stated that, “… since the products of the appellant and the First Respondent were not appearing similar or identical at the initial stage of the proceedings …. Given the fact that the products of the Appellant and also the First Respondent have their own uniqueness vis-a-vis the requirement of the particular patients, a mere functional similarity does not lay a strong ground for granting interim injunction.”
The fact that the bench decided the issue of prima facie case on visual similarity is rather unusual, given the fact that functional elements normally are predominant factors in deciding patent infringement suits. On the other hand, visual comparisons are more of a copyright and design parameter to determine infringement. However, their reasoning was probably directed by the public interest involved and the fact that a determination on the basis of functional similarity would grant the Appellant a very wide patent.
Next as regards balance of convenience the court opined that, “considering the relevance of prosthesis to those who are in need of the same as a life saving equipment, its cost effectiveness and the functional advantage of a customised titanium made prosthesis, ... the balance of convenience [is not] in favour of the Appellant to grant the interim injunction.”
Lastly, the court also held that the Appellant did not satisfy the criteria of irreparable injury. They stated that, “the affidavit of the Appellant was bereft of any details with regard to the loss suffered and likely to be suffered by the appellant on account of the supplies by the First Respondent.”
On these grounds the court dismissed an appeal for an interim injunction.
The case is interesting given the emphasis laid on the public interest involved in access to prosthesis and the same being used as a ground to conclude that ‘balance of convenience’ tilted in favour of the Respondents, because of their ability to provide access to medicine to the public at large at an affordable price.
Furthermore, the question is, whether there a trend catching up in the judiciary wherein the ‘public interest’ factor is used to tilt the balance and decide an injunction application. This approach was also seen in the tarceva patent case, dealt with in earlier posts.
Finally, a rather disturbing trend in the judgment is that the judges kept confusing the intellectual property involved. Though concerned with patents, they spoke about infringement of copyright and design rights. Given the fact that they possibly confused standards applicable in deciding the existence of a prima facie case, the confusion in terms of the intellectual property being dealt with is rather undesirable.
SpicyIP would like to thank Sandeep Rathod for bringing this case to our attention. Also, I would like to thank Shamnad for his suggestions and inputs on this post.