The case of Biswanath Prasad Radhey Shyam Vs Hindustan Metal Industries is a landmark judgment in Indian patent law, where the Supreme Court of India examined the principles of novelty and inventive step in patent protection. The case revolved around a patented method for manufacturing utensils and its alleged infringement, raising critical issues on what constitutes an invention under the Indian Patent and Designs Act, 1911.


Detailed Factual Background:
The appellant, Biswanath Prasad Radhey Shyam, and the respondent, Hindustan Metal Industries, were both engaged in the business of manufacturing utensils in Mirzapur. In 1951, Purshottam Dass, a partner in the respondent firm, claimed to have invented a new method and device for manufacturing utensils. The claimed invention was aimed at improving the pre-existing method, which posed risks to workers as utensils would often fly off during the manufacturing process. The respondent filed for a patent, and after meeting the necessary requirements, the patent was granted under the Indian Patent and Designs Act, 1911, effective from December 13, 1951.

In September 1952, the respondent learned that the appellant was allegedly using the patented method without authorization. A legal notice was served, but the appellant continued to use the method, prompting the respondent to file a suit for a permanent injunction and damages. The appellant contested the suit, arguing that the respondent's method lacked novelty and an inventive step, making the patent invalid. A counterclaim for revocation of the patent was also filed.

Detailed Procedural Background:
The case initially started in the District Court, Allahabad, but was later transferred to the High Court under Section 29 of the Indian Patent and Designs Act, 1911. Both the suit for injunction and the counterclaim for revocation were consolidated and tried together. A Single Judge of the High Court ruled in favor of the appellant, dismissing the respondent's suit and allowing the revocation of the patent.

On appeal, a Division Bench of the High Court reversed the decision, holding that the patented method involved an inventive step and amounted to a new method of manufacture. Dissatisfied with this ruling, the appellant moved the Supreme Court, which ultimately decided the matter.

Issues Involved in the Case:
The first issue was whether the patented method constituted a manner of new manufacture or improvement under the Indian Patent and Designs Act, 1911. The second issue was whether the alleged invention involved an inventive step and novelty, given the prior knowledge and practices in the industry. The third issue was whether the decision of the High Court's Division Bench, which upheld the validity of the patent, was legally sustainable. The fourth issue was whether the revocation of the patent by the Single Judge was justified.
Details of the Patent and its Claims

The respondent's patent was for a "Method of end means for mounting metallic utensils or the like on a lathe for turning them before polishing." The title of the patent was later described in the complete specification as "Means for holding utensils for turning purposes." The complete specification explained that the patent aimed at addressing the problem of utensils slipping off the chuck while being turned, which was hazardous to workers. The patented device included a pressure spindle that was rotatably mounted, with a hollowed end possibly fitted with ball bearings to enable smooth rotation. The end of the pressure spindle could be either pointed or blunt and was meant to be firmly held against the utensil to prevent it from dislodging.

The claims of the patent primarily covered a combination of elements, including an adapter for holding the utensil, a pressure spindle passing through a guide block, and the optional presence of ball bearings. The key claim was that the patented method and means of mounting utensils on a lathe provided a novel and inventive solution to an industrial problem.

Evaluation of Claim Construction and Patent Infringement:
The Supreme Court analyzed claim construction, which refers to how the scope and meaning of a patent's claims are determined. The Court noted that the proper way to construe a specification is to first read the description of the invention and then examine the claims, as the patentee cannot claim more than what is disclosed in the specification. The Court relied on Arnold Vs. Bradbury and Parkinson v. Simon, which emphasized that claims must be interpreted in conjunction with the specification and not in isolation.

The Court then evaluated whether the appellant's allegedly infringing device fell within the scope of the patented claims. The key question was whether the appellant was using the same combination of elements in substantially the same way to achieve the same result. The respondent argued that the appellant's method copied the patented process, thereby constituting infringement. The appellant contended that the claimed invention was neither novel nor inventive and that similar techniques had been in use long before the patent was granted.

Detailed Submissions of the Parties:
The appellant argued that the patented method was already known and in use in the commercial world before the date of the patent. The appellant contended that the invention did not involve any inventive step or novelty as required by patent law. The appellant also asserted that the respondent's patent lacked utility and was liable to be revoked. Furthermore, the appellant maintained that the method described in the patent was merely an application of pre-existing techniques with slight modifications, amounting to a workshop improvement rather than an invention. The appellant highlighted that Purshottam Dass, the patentee, did not appear as a witness to establish the novelty of the invention, raising doubts about its originality.

The respondent countered that the patented method introduced significant improvements in the manufacturing process, making it safer and more efficient. The respondent argued that the invention had utility, which should support its validity. The respondent further contended that the appellant's use of the method constituted an infringement of the patent and that an injunction should be granted. The respondent also submitted that the Single Judge of the High Court erred in revoking the patent, as the improvements were novel and non-obvious.

Detailed Discussion on Judgments:
The Supreme Court extensively discussed the principles of patent law, particularly the concepts of novelty and inventive step. Several precedents were cited, including Rickman Vs. Thierry (1896) 14 Pat. Ca. 105, Blackey Vs. Latham (1888) 6 Pat. Ca. 184, and Humpherson Vs. Syer (4 RPC 407), all of which emphasized that an invention must not only be new but must also involve an inventive step beyond mere mechanical improvements. The Court also relied on Harwood Vs. Great Northern Ry. Co. (1864-65) XI HLC 654, which held that applying an old contrivance to a new purpose does not constitute a valid patent.

Detailed Reasoning and Analysis of the Judge:
Justice Sarkaria, delivering the judgment, reasoned that the patented method was not a new manufacture or a significant improvement over existing methods. The technique of holding an article with a pressure spindle was already known in the industry. The alleged invention was merely an adaptation of existing technology, amounting to a workshop improvement rather than an inventive step. The failure of the patentee to provide evidence of research, experimentation, or innovation further weakened the claim of novelty. The High Court's Division Bench erred in reversing the Single Judge's decision, as it overlooked the fundamental principle that patents must demonstrate both novelty and an inventive step.

Final Decision:
The Supreme Court allowed the appeals, set aside the judgment of the Division Bench, and restored the judgment of the Single Judge. The patent was held invalid and revoked. The Court also denied damages to the respondent and ruled that each party would bear its own costs.
Law Settled in This Case

The Court clarified that a valid patent requires both novelty and an inventive step. Mere workshop improvements are not patentable. The grant of a patent does not guarantee its validity, and it can be challenged in court. Prior public knowledge or usage of an alleged invention negates its novelty. The burden of proving novelty and an inventive step lies on the patentee. The absence of experimental research or new principles of operation undermines a claim of invention.

Case Title: Biswanath Prasad Radhey Shyam Vs Hindustan Metal Industries
Date of Order: December 13, 1978
Case No.: Civil Appeal Nos. 1630-1631 of 1969
Neutral Citation: AIR 1982 SC 1444, (1979) 2 SCR 757, 1979 (2) SCC 511
Court: Supreme Court of India
Judge: Hon'ble Justie Shri Justice Sarkaria

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539