Lalubhai Chakubhai Jarivala v. Shamaldas Sankalchand Shah

AIR 1934 Bom 407

Brief Facts:

• Plaintiff, a chemist, in 1927 started with one Girdhanlal, brother of Defendant, a partnership concern being Jarivalla Shah & Co. In this firm, Defendant  was a clerk.
• The firm had an experimental branch under the namr Jasco & Co., lead by one Dr. Patel.
• In August, 1928, Plaintiff left for Europe, leaving Dr, Patelt in charge of the chemistry department.
• In February, 1929, Plaintiff returned to Bombay and thereafter Dr. Patel left employment of Jasco & Co.
• In October, 1929, Harakchand Shivji & Co. asked the Plaintiff as to whether he could introduce a process of whitening the almonds.
• In November, 1929, Plaintiff started experiments to achieve such a process.
• In April 1930, Harakchand Shivji & Co. commenced selling of whitened almonds processed through Plaintiff’s process. The said entity paid the Plaintiff Rs. 300/- per month for use of Plaintiff’s process. However, the taste of the almonds was not satisfactory because of application of the process.
• In Autumn of 1930, Harakchand Shivji & Co., ceased to deal in those almonds.
• Plaintiff kept on working towards achieving the desired white almonds
• In February 1931, Plaintiff established a modified process which ensured taste of the almonds despite their shell being polished to white colour. During this time, a Chemist called Virmani helped the Plaintiff in his experiments and learned about the process in confidence. Harakchand Shivji & Co. re-started paying Rs. 300 per month to the Plaintiff and they started to sell almonds dealt with under the new process.
• In January 1931, Varmani ceased to be employed by Jasco & Co., and made an arrangement of Rs. 100/- per month with the Defendant during June to teach the Defendant how to bleach almonds in his factory, and the Defendant made arrangements with the merchants with whom he was doing business by which the latter agreed to purchase from the Defendant almonds treated under the process explained by Varmani and to erect a factory where the process could be employed. This was done by October 1931.
• In July 1931, the Plaintiff applied for letters patent in respect of his process of treating almonds. The Patent was granted in 1932.
• The Plaintiff sued the Defendant for infringement of Patent. The matter in appeal was heard by the Division Bench.  

The judges of the Division Bench gave same decision but penning it separately. We provide herein a summary of the decision on important issues in the matter.

Decision:

Hon’ble Mr. Justice J.W.F. Beaumont ‘s Observations

Issue 1 – Patentability

The first issue was whether the process was an invention. The salient feature of the process was the use of bleaching powder on the almonds in conjunction with sulphur dioxide and then treating them under a pressure of five lbs. per square inch in a closed chamber which resulted in commercial results to effectively cater to demand for white almond.There was sufficient amount of inventive genius.

Issue 2 – Whether Plaintiff was true and first inventor when Dr. Patel had deposed that he used bleaching powder and sulphur dioxide first to bleach almonds

The notes of Dr. Patel are not in evidence. Assuming, Plaintiff did get those notes, it is quite clear that the process is not one which  Plaintiff subsequently invented, as there was no reason why Plaintiff in middle of 1930 introduced an unsatisfactory system and spent another year in discovering a new process. Thus, Plaintiff is the true and first inventor.

Issue 3 – Non-Novelty by use of Process by Plaintiff itself

Another issue was whether the Plaintiff himself used his process in such a way as to disentitle him to apply for letters patent..

Defendant/Respondent’s Contentions on Novelty

• There is evidence that the process was used openly by the Plaintiff between February and July, 1931, in the factory of Harakchand Shivji& Co; and
• It is established that Harakchand Shivji& Co. during those four months sold in the open market on a commercial basis nuts treated by the plaintiff’s process, and that by itself constitutes public user.

Court’s observations:

• The process was not openly used by the Plaintiff. In fact, the Plaintiff excluded prople  with a view to prevent discovery of the process. Evidence of people to the effect that the manufacturing was done openly is not an evidence of a chemist but a person who is not in a position to know to what extent people coming into factory would be able to ascertain the secrets of the process;
• No one has stated that they learned the process by going to the factory of Harakchand Shivji  & Co.;
• The fact that Defendant paid Virmani demonstrates that  the process of the Plaintiff could not have been learnt by visiting the factory;
• It is possible that sale of an article manufactured under a secret process may amount to a public user of the process, because the article may be of such a character that anybody buying it and getting it examined by experts can ascertain the secret of its manufacture, and if the article is of that character, the sale of the article in public would, involve a disclosure of the secret of manufacture and thus amount to public user of the process. However, in this case the article manufactured is an almond treated by a particular process which makes the shell whiter and smoother than the shell in its natural state. It cannot be seen how anybody purchasing an almond treated by this process could ascertain the method of treatment, and there is nothing in the evidence on record to the contrary; and
• If there is an article manufactured under a secret process and that article is of such a character that nobody by examining it can find out the secret of that manufacture, then the sale of that article in public cannot amount to public user of the process.

Issue 4 – Infringement

The Defendant’s process used bleaching powder and sulphur dioxide but did not suggested use of any pressure. The Plaintiff’s contention was that Defendant’s process involves use of exhauster and thus must involve necessarily pressure. This contention was not challenged in cross-examination. The evidence of Plaintiff that Defendant’s process in its essential features was identical to Plaintiff’s was not contradicted. Defendant committed infringement.

Hon’ble Mr. Justice S.S. Rangnekar ‘s Observations

Issue 1 – Patentability

Though the process was in making use of substance previously known, but the ingenuity was in combining them in a particular manner and in a particular sequence to produce an article which was not produced before and to overcome the difficulties which existed even after a crude application of some of these substances previously.

Issue 2 – Whether Plaintiff was true and first inventor when Dr. Patel had deposed that he used bleaching powder and sulphur dioxide first to blech almonds.

• Dr. Patel had conceded that his experiments were not a commercial scale.
• If Dr. Patel’s process was success, why was the process used only after Plaintiff returned from Europe.
• Until this case, there was no allegation that Dr. Patel had invented the process.
• As per evidence of chemists and Varmani, the process was not known until Plaintiff discovered it.
• Thus, Plaintiff is the true and first inventor.

Issue 3 – Non-Novelty by use of Process by Plaintiff itself

• Evidence shows that nobody knew what the Plaintiff’s process was until the middle of 1931 when the Defendant got hold of Varmani who knew it, and who worked the process in his factory for remuneration; and
• Further, there is no evidence of Virmani using the process himself before October, 1931.  The communication to Varmani may amount to publication, but that was not pleaded.

Issue 4 – Infringement

Evidence shows that Varmani gave to the Defendant the process which he had learned from the Plaintiff.