Delhi High Court Rejects Attempt to Import Claim Amendment from a Related Suit Without Amending Pleadings: Glaverbel S.A. vs. Dave Rose & Ors.

In a significant ruling on patent litigation procedure, Justice A.K. Pathak of the Delhi High Court, in Glaverbel S.A. vs. Dave Rose & Ors., rejected an interlocutory application seeking to read into the present suit an amendment to a patent claim that had been allowed in a separate, related suit—without the plaintiff amending the pleadings in the present proceeding. The Court further relied on a certified copy obtained from the Patent Office, which confirmed that the amendment in question had not, in fact, been reflected or recorded in the official patent records.

Background

The plaintiff, vide Interlocutory Application No. 12535/2011 (filed under Section 151 of the Code of Civil Procedure, 1908), sought to amend Independent Claim 1 of the patent in suit in CS(OS) No. 594/2007, on the basis that an identical amendment had already been allowed in a related but separate suit, CS(OS) No. 593/2007.

The claim as originally granted under Patent No. 190380 read as follows:

"A Mirror with no copper layer comprising: (i) a vitreous substance, (ii) at least one material selected from the group consisting of bismuth, chromium, gold, indium, nickel, palladium, platinum, rhodium, ruthenium, titanium, vanadium and zinc at the surface of the said substrate, (iii) a silver coating layer on the surface of the said substrate... and (iv) at least one paint layer covering said silver coating layer."

In the earlier suit, CS(OS) No. 593/2007—filed by the plaintiff against one Shri Anand Mahajan for permanent injunction restraining infringement of Patent No. 190380, along with rendition of accounts—the plaintiff had filed IA No. 13519/2007 under Sections 57 and 58 of the Patents Act, 1970, read with Section 151 CPC, seeking to amend Clause (ii) of Claim 1 by inserting the phrase "a sensitizing material, typically tin, and" at the beginning of the clause.

By order dated September 10, 2009 (reported as AGC Flat Glass Europe SA vs. Anand Mahajan and Ors., 2009 (41) PTC 207 (Del.)), a Single Judge of the Delhi High Court allowed this amendment, holding it to be merely clarificatory or elaborative in nature, and one that did not alter the scope of the invention. The Court in that case further observed that even if the amendment were construed as a disclaimer rather than a clarification, it would not stand in the way of allowing the amendment—and, if anything, would support it. The Court left the merits of the disclaimer-versus-clarification controversy to be determined at a later stage.

Plaintiff's Contentions

Relying on the September 2009 order, the plaintiff contended that the amendment to Claim 1 was clarificatory in nature and did not enlarge the scope of the invention—particularly since Claims 9 and 10 of the same patent already referred specifically to sensitization of the mirror using tin chloride, a fact expressly noted by the Single Judge in the earlier order.

The plaintiff further argued that:

• The order allowing the amendment operated in rem, had attained finality, and could accordingly be read into the present suit without any formal amendment to its pleadings;
• The correctness of the September 2009 order could not be re-examined in the present proceeding;
• The defendants had, in any event, understood Claim 1 as covering copper-free mirrors involving an initial sensitization step using tin chloride—as evidenced by paragraphs 17 to 19 of their own written statement, in which they had pleaded invalidity of the claim on the ground that sensitization by tin chloride was not novel, citing prior art including Franz, Shipley, Orban, and Buckwalter;
• Consequently, no formal amendment of the pleadings was necessary, and the defendants would suffer no prejudice if the amended Claim 1 were read into the present case; and
• Any insistence on formal amendment at this stage would serve only to delay final adjudication, since the defendants would use the opportunity to seek a de novo trial, including recall of the plaintiff's witnesses for further cross-examination.

Defendants' Contentions

The defendants opposed the application, contending that:

• The plaintiff could not seek to read an amended claim into the present suit without formally amending the plaint, which was impermissible in law;
• The September 2009 order itself recorded that the amendment did not attract Sections 58 and 59 of the Patents Act, 1970—meaning that the amendment had not, in fact, been allowed under the statutory provisions governing amendment of granted patents, and could therefore be read only in the context of CS(OS) No. 593/2007, and not in any other proceeding;
• The amendment permitted by the Court had never been recorded in the official Patent Office records; indeed, a certified copy of the patent (Ex. PW1/3), issued by the Patent Office in March 2009, did not reflect the amended Claim 1—confirming that no formal amendment under Sections 58 and 59 had, in fact, taken effect;
• Any amendment to Claim 1 in the present suit would require the plaintiff to file an appropriate application under Order VI Rule 17 of the CPC, which was, in any case, impermissible at this stage since the trial had already commenced and the plaintiff's witnesses had already been cross-examined;
• The plaintiff, having been well aware of the September 2009 order, had nonetheless allowed its evidence in the present suit to conclude on July 21, 2011—well after that order—without seeking amendment; and
• Permitting the amendment at this belated stage, without formal pleading amendments, would prejudice the defendants, who would need to file an amended written statement and further cross-examine the plaintiff's witnesses on the amended claim.

The defendants further submitted that, under patent law, a claim may relate either to a product or to a process. Claims 1 to 8 of the patent in suit related to a product patent, while Claims 9 to 20 related to a process patent. By seeking to introduce tin into the product claim (Claim 1), the plaintiff was, in substance, attempting to expand the scope of its product monopoly to cover a tin-layered product—an expansion impermissible by way of the proposed amendment.

The Court's Findings

The Court declined to accept the plaintiff's contention that the amendment allowed in CS(OS) No. 593/2007 could be read into the present suit without corresponding amendment of the pleadings. In doing so, the Court laid down the following principles:

1. Cases must be decided on their own pleadings and evidence. It is well settled that a suit must be adjudicated strictly on the facts pleaded and proved by evidence in that particular case. No judicial notice can be taken of facts emerging from the pleadings or evidence in a different case, even where that other case involves related parties or subject matter.

2. Precedent versus fact. While judicial pronouncements may certainly be cited before the Court in support of a legal proposition, the factual findings recorded in such judgments cannot be imported as facts in the case at hand.

3. Subsequent events require formal amendment. Any subsequent development—such as an amendment allowed in a related proceeding—can only be brought on record through a formal amendment of the pleadings in the present suit; it cannot simply be read in by reference to the facts or documents of another case.

4. Conduct of the plaintiff. The Court noted that the plaintiff appeared to have been conscious of this requirement, having initially expressed an intention to seek amendment of the plaint (as reflected in the Court's order dated February 5, 2010), before subsequently electing, on May 3, 2010, not to pursue any such amendment—following which issues were duly framed in the suit.

5. Delay is not a valid ground for bypassing formal amendment. The Court held that the mere fact that formal amendment of the pleadings might delay disposal of the suit could not justify adopting a shortcut of reading the amended claim into the record without the necessary procedural steps.

6. The amendment was never recorded by the Patent Office. Critically, the Court noted that the amendment allowed in CS(OS) No. 593/2007 had still not been recorded in the official records of the Patent Office. The certified copy of the patent placed on record in the present case—issued more than six months after the September 2009 order—contained only the original, unamended Claim 1. Since the plaint itself also contained the unamended claim, and since only evidence consistent with the pleadings could be considered at the stage of final adjudication, the amended claim could not be read into the present proceeding.

Decision

Accordingly, the Court held that while the plaintiff remained at liberty to cite the September 2009 order at the time of final hearing in support of the legal principles laid down therein, the order could not be relied upon as a document placing the amended Claim 1 on record in the present suit. The plaintiff was, however, granted liberty to file an appropriate application seeking amendment as and when a certified copy of the amended patent was received from the Patent Office.

The application (IA No. 12535/2011) was accordingly disposed of in these terms, rendering the connected application filed by the defendants (IA No. 13631/2011, under Section 151 CPC) infructuous, and it too was disposed of accordingly.

Significance of the Ruling

This decision reaffirms a foundational principle of civil procedure with particular relevance to patent litigation: that findings, amendments, or orders passed in one suit—even where they concern the same patent and overlapping subject matter—cannot be mechanically imported into a separate, independently pleaded suit without formal amendment of the pleadings in that latter proceeding. This is so even where the order in question may, in a general sense, operate in rem.

The ruling also underscores the evidentiary significance of the Patent Office's official records. The Court placed considerable weight on the fact that the amendment—though allowed by a coordinate bench—had not been reflected in the certified copy subsequently issued by the Patent Office, reinforcing the principle that amendments to granted patents under Sections 58 and 59 of the Patents Act, 1970 acquire full legal effect only upon being duly recorded by the Patent Office, and not merely upon being judicially sanctioned in the context of a specific suit.

For patent litigants pursuing parallel or related suits involving common patents, this judgment serves as a caution: any amendment secured in one proceeding must be independently and formally carried into every other proceeding in which reliance is to be placed upon it, through proper application under Order VI Rule 17 of the CPC, rather than by way of reference or cross-reliance on orders passed in the related matter.