INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai, Teynampet, Chennai-600018
*****
(Circuit Bench sitting At Mumbai)
M.P.Nos. 41 & 42 of 2012 in
TRA/05/2008/PT/MUM &
TRA/06/2008/PT/MUM
and
TRA/05/2008/PT/MUM &
TRA/06/2008/PT/MUM
(TUESDAY THIS, THE 12th DAY OF JUNE, 2012)
HON’BLE SMT.JUSTICE PRABHA SRIDEVAN … CHAIRMAN
HON’BLE SHRI D.P.S. PARMAR … TECHNICAL MEMBER
1. M/s Aditi Manufacturing Co.,
D/7, D/8 Akurli Industrial Estate,
Akurli Road, kandivali (East),
Mumbai 400 001. … Applicant
(Represented by Advocates: Ms. Rushvi N.Shah
Mr. Zahid K. Shaikh)
2. M/s Bharat Bhogilal Patel,
1/41, Juhu Gold Mist,
J.V.P.D. Scheme, Vile Parle (W),
Mumbai – 400 049
Maharashtra.
3.The Controller of Patents & Designs,
The Patent Office,
The Patent Office,
“Nizam Palace”, 2nd M.S.O.Building,
5th, 6th & 7th Floor,
234/4, AJC Bose Road,
Calcutta – 700 020. … Respondents
(Represented by Advocate: Mr. Ketan Parekh)
ORDER (No. 167/2012)
Hon’ble Smt. Justice Prabha Sridevan, Chairman:
Two transfer applications TRA/05/2008/PT/MUM & TRA/06/2008/PT/MUM received from Ahmedabad High Court vide Order dated 22.08.2002 seeks the revocation of two Patents viz. No.189027 & 188787. Patent No.189027 is for a process of manufacturing engraved design articles on metals or non-metals and Patent No. 188787 is for “an improved laser marking and engraving machine”. The application Nos. are 610 & 611 BOM 1998 and patent were granted.
The abstract of the first patent reads as follows:-
“A process of marking, etching & engraving by using laser beam Technology on metals & non-metals consisting of a laser head comprising a head, mirror mount, aperture mount, beam bender, rail through power supply, RF Driver, heat exchanger & chiller to generate a laser beam connected with a programmable computer system to generate the laser beam for marking & engraving the required design on the substance placed on the table through the Galvos.”
The abstract for the second patent reads as follows:-
“A laser marking & engraving machine consisting of the laser head comprising of head, mirror mount to mount the mirror, Q-switch to mount the Q-switch for Aperture mount to regulate the aperture so as to very the intensity of the Laser Beam,. which is further provided with a beam bender for positioning the beam in a required direction which is supported in a rail & connected to a control Pane provided with power supply, RF Driver, Heat Exchanger, Chiller to generate a laser beam of required intensity for marking/etching, engraving, scrubbing, cutting as per the required design programmable through a computer on metals and non – metals through beam steared galvo’s and flat field galvo’s/scanning heads. ”
2. Since the applicant for revocation is same and subject mater is related the revocation for grant of the product patent and process patent they were taken up together at the request of the applicant. The revocation in both cases is sought on the ground that the invention has been used from 1996 by one Sarju Laser Marking Private Limited and sold in the market even before the date of patent. Laser marking was known and US Patent No. 4467172 is similar to the invention. So are US Patent No.4507789 and Japan Patent No.279350. The machine and process described by inventor has been published in 1992 by Excel Control Laser Inc. The invention is not new; it is publicly known. It is a collection of known integers. The grant of patent has been obtained by suppression of information and there is no inventive step.
The product patent relates to laser marking and engraving machine. This work was earlier carried out by mechanical and chemical means which was different, tedious, lengthy and costly. By the invention, a simple to use machine has been invented. The object of the invention is to give improved marking quality, reduction of maintenance cost, elimination of secondary process, safety and easy handling and pilfer proof marking.
3. Accordingly there is provided a laser marking & engraving machine consisting of a laser head consisting of a head, mirror mount, aperture mount, beam bender, rail, through power supply, RF Driver, heat exchanger & chiller to generate a laser beam using with a programmable computer system to generate the laser beam for marking & engraving the required design on the substance.
4. According to the complete specification, the machine has got versatile application and by changing the Galvo’s many modifications have been effected. The Claim- 1 in Patent No. 188787 reads as follows:-
“A laser marking & engraving machine consisting of the laser head comprising of head, mirror mount to mount the mirror, Q-switch to mount the Q-switch, Aperture mount to regulate the aperture so as to vary the intensity of the Laser Beam, which is further provided with a beam bender for positioning the beam in a required direction which is supported in a rail & connected to a control panel provided with power supply, RF Driver, Heat Exchanger, Chiller to generate a laser beam of required intensity for marking/etching, engraving, scrubbing, cutting as per the required design programmable through a computer on metals and non-metals through beam steared galvo’s & flat field galvo’s/scanning heads.”
The Claim -1 in the process Patent 189027 reads as follows:
“A process of manufacturing engraved design articles metals or non-metals using laser beam technology consisting of a marking the required design on metal or non-metal;
b. etching the outer and inner area of the design;
c. engraving the etched area and finally drilling the engraved area by means of laser beam through sequential command from a computer to obtain ornamented design on precious metals and non-metals.
5. Except for the above Claims, both the complete specifications are identical in description word by word. One is verbatim reproduction of another.
6. In the Counter Statement, the Patentee has initially taken the maintainability objection, regarding cause of action by the petitioner without prejudice to that it is alleged that Shri Deepak Shah is not the partner of the firm M/s Aditi Manufacturing Co. and that the applicant has visited the respondent’s Plant with the managing Director of M/s Laser S.O.S Pvt. Ltd and thereafter had started their business and after getting to know the technology from the respondent, the petitioners are trying to challenge the Patent .
7. In Paragraph 8 of the written statement, the applicant is called upon to prove when they came to know about two patents and states that the allegations about the patents are false. Paragraph 9 refers to the provisions of law to be relied on. In paragraph 10, the respondent has denied that the technology was known for a long time. It is stated that the respondent was the first to invent this technology. According to the respondent, the company Excel Laser Computers referred to in the petition is not the correct name of the company. It is Excel Control Lasers and that the Patent granted in USA is different from the Patent in question. In paragraph 11, the respondent denies that the two impugned patents are identical and ditto of each other. In paragraph 12, it is stated that the invention involves inventive steps and the prior arts, US Patent Nos. 507, 789 & 76 are different. According to the counter, in the invention the cooling unit directly removes the heat from the Laser Head and there are no primary and secondary cooling systems, the Head Design of the patent and mounting of optics like mirror and Q-switch and Galvos are totally different, and the resonating length and the distance from the Head to Mirror are different. According to the respondent from the “above features’, it will be clear that the respondent’s Patent is different. And the invention of the respondent is unique. Paragraph 13 denies the allegation made with reference to Claim 1,2, & 3. According to the respondent, the invention is not a copy of any process or patent known in public domain. It is also stated that
i) the system is connected to computer readable medium integrated with hardware to give sequential command from computer to obtain ornamental designs on metals and non-metals and that the hardware in the programmable computer is capable of generating different engraved design articles and the process of laser marking does not only depend on Galvos but other factors like generation of cooling system, power supply, RF generation, type of laser, beam size, beam diameter, focal length etc.
8. According to the respondent,
a) Marking on ABS is good with Nd:Yag laser but not with CO2 laser;
b) 2KW CO2 laser can cut steel of 12 mm but cannot mark on it;
c) CO2 laser cannot cut diamonds but Nd:Yag laser can;
d) Nd:Yag laser is not good at marking on diamonds. A green laser is good at marking on diamonds.
According to the respondent, if the laser beam is not focused properly, the object cannot be marked and “this is most important and basic step of our basic process Patented”. According to the respondent, the applicants are being non technical and therefore, they do not understand the technical aspect of the invention. It is not a combination of known-integers or rearrangements.
9. In paragraph 19, the respondent has stated that they are not aware nor admit their prior publication of technical literature dated 1992 titled “INDUSTRIAL STRENGTH LASER MARKING” and they are not aware nor do they admit the said literature published by the Excel Control Laser. They submit that their invention is not based on any of the literature as alleged by the applicant. This in brief is the pleading of the respondent.
10. Reply was filed by the petitioner where it is stated that Shri Deepakbhai Shah was the partner at the time of filing of revocation petition and it is denied that he visited the plant and had started their business thereafter. It is stated specifically that the publication of 1992 has been copied completely right from the machine and process.
11. The Applicants has also filed additional documents along with the Miscellaneous Petition. Originally he filed some documents along with an affidavit and we had permitted them to file it in proper form. An order was passed on 19.03.2012 by this Board that the documents will be received in evidence only on payment of Rs. 5000/- costs, which has not been paid. However, in the interest of justice we have seen them.
12. The learned counsel for the applicant Ms. Rushvi N. Shah submitted that the invention is not new, there is no inventive step, there are prior arts disclosing identical product and processes. She submitted that the evidence filed would prove their case. Exhibit ‘A’ is the notice issued on behalf of the respondent inventor Shri Bharat Bhogilal Patel calling upon the applicant to stop infringing the patent and for rendering of complete accounts etc. This is dated 07.10.2005. A reply was sent in November, 2005 on behalf of the applicant asking the respondent to give the particulars of the Patent, copy of the Patent specification. Immediately, in 2006, a revocation application was filed. So clearly the applicant was a “person aggrieved”. The learned counsel submitted that they had also filed a Caveat before the Hon’ble Bombay High Court but no injunction suit was filed. The learned counsel referred to Section 3(k), 3(f) and 10(4) of the Patent Act and stated that on these grounds the grant of patent was attacked. Learned counsel submitted that there was suppression of prior art and publication. The learned counsel submitted that according to the inventor, the patent was for a laser process for making object which he invented. But even before 1980, Laser Technology was available. The learned counsel referred to Exhibit ‘C’ filed along with the revocation application to show that there was nothing new in the Patent. The learned counsel also submitted that in the counter statement, the respondent has not stated what was the existing state of art and how the invention is an improved one. The learned counsel referred to the depiction in exhibit ‘C’ of the machine which is identical to Figures 2 & 3 annexed to the complete specification. The learned counsel submitted that the prior art US Patent’789 was dated 26.03.1985 and that this teaches the invention. The learned counsel referred to the affidavit of Shri Arvindbhai Patel to support their case. The learned counsel submitted that Insta mark was prior to invention. The learned counsel referred to several decisions.
As per specification
Insta Mark
13. The learned counsel for the respondent submitted that the applicant’s conduct was not bonafide. He submitted that the applicant is in the same business and knew about this invention. He pointed out that the title says ‘improved’ which shows that the existing machine was improved upon. The invention lay in that all the processes - marking, etching engraving, scrubbing and cutting were done in one stroke. He submitted that all the prior arts are US Patents and they were used in a different voltage from the Indian one. The learned counsel submitted that the industrial application of the invention is much wider. There is a beam in the invention which is not found in the prior art. The range in the invention is wider to cover all materials from plastic to diamonds and it is therefore, cost efficient and effective. The learned counsel submitted that in the invention different sources of light may be used and the multi step process for marking has been made into a single step process. The learned counsel submitted that the invention works in Indian temperature when compared to the prior art and even Small Scale Industries can use it and therefore, it has economic significance. The learned counsel submitted that the invention is not a software by itself. The learned counsel also referred to the expert evidence.
14. In reply, the learned counsel for the applicant submitted that the word “improved” is vague, is not clear. The diagram is not clear. There is a striking difference from what is claimed to be the invention in the counter statement and what is claimed to be in the invention in the oral submissions and the counter statement does not specifically deny the various allegations made.
15. Now we will look at the evidence filed by the applicant to prove their case.
a) US Patent ‘ 789 is for reliable low cost light weight CW pumped Nd:Yag laser with option at Q Switching. There is a laser pot. The source of light is a lamp. There is a cooling system. The laser is adopted to perform at different thresholds, and at “ above evaporation threshold” it drills, engraves trims and inscribes. It is said to be highly versatile. This is dated 30.09.1981. Therefore Nd:Yag laser was known, it used a cooling system and it could engrave.
b) Japanese Patent 141679 – It is a solid state laser oscillator, where plurality of laser beams are extracted from plurality of mirrors.
c) US Patent 4,467172. This is a method and apparatus for laser engraving diamonds (June 3, 1983). This encompasses a solid state laser and an acuosto-optical Q-Switch. This uses a YAG rod.
d) Excel Quantronix Spare Parts catalog (1992). This shows that Nd:Yag laser is the most frequently employed for beam stereo laser marking. The diagram of the Nd:Yag laser shows 2 mirrors one is the front mirror and a rear mirror and in between the two mirrors there are safety shutter, intra-cavity Aperture, Laser Head with Nd;Yag Crystal and the Krypton Arc Lamp, Q-Switch and one more Intra –cavity Aperture. In the invention we find the laser head consisting of a head, mirror mount, aperture mount, beam bender, rail, through power supply, RF Driver, heat exchanger & chiller to generate a laser beam connected with the computer system. It specified the mirror mount for the mounting of plurality of mirrors, Q-switch mount for Q-switch, Aperture mount for aperture. Head which has got gold cavities, lamps source (CO2 Nd:Yag). All the features are same. In the Publication of the year 1992, the pump source is usually krypton arc lamp. The report also shows that the laser operates on a multi mode operation. We have seen earlier, that the inventor had claimed that this multi mode operation is one of the feature of his invention but this was known from 1992 publication. The extract also shows while it would normally operate in multi mode condition, it would also operate in TEM mode for making very narrow line widths. The extract also explains why the switch is used to produce a pulsed laser output by alternatively blocking and unblocking the path of reflection between the optical feedback mirrors. Normally, the switch contains a transparent material like quartz. The extract explains that when a RF signal is applied to the transducer, an acoustic wave is projected through the quartz. Therefore, the use of the RF Driver in the claim is also a known feature. The invention claimed that the table showing the spot size according to area would show that his invention is something new. But we have already seen that the operation can be modulated. This extract shows that the beam diameter can be changed. We also find that to remove the excess heat, Nd;YAG lasers are cooled by a closed-loop, deionized (DI) water system. This cooling is claimed to be a special feature of the invention. We find that this type of cooling with the closed loop DI water system is already a feature well known. In the extract, it also shows that the operating software which is in use today can control all aspects of the marking process and all the laser operating parameters and interactive communication. Therefore, what the inventor claims to be a single stroke invention is really again nothing new. The extract also used the InstalMark Signature® software with the manual. The Table enclosed shows that the wavelength i.e. usually used is 1064 nm but 820 or 780, 532 may also be used. This extract shows when most metals are very absorptive to the Nd:YAG 1.06 mm wavelength and can be readily marked. Next to the1064 nm the most used wavelength is 532. In the same extract we find a Tip given that if reflectivity is a problem, it is possible to change the frequency and 532 nm wavelength may produce better results. Therefore, the table that is referred to show the technical advance of the invention is not anything new. It is just taken from this publication. We are not inclined to accept the statement of the respondent that he was neither aware nor would he admit the publication. A person who engages himself in this field would surely have gone through the literature pertaining to the same subject. This catalogue also refers to multimode operation, the Acuosto-optical Q-Switch and also cooling system. There are optical feed back mirrors. This shows that laser heads have to be cooled. This shows the out put beam of the Nd:YAG laser is focused by optical components located in the galvanometer. The galvanometers are mounted to provide independent beam motion on both X & Y axis of the marking file and are crucial to produce a high quality marking. So every thing that is declared as basic features in the invention were publicly known prior to the invention.
e) The International–Diamond Technical Symposium held in October 1991 at Israel. This too shows that YAG laser beam has been used in Diamond industry for a long time and in India right from 1987 there have been laser cleaning machines.
f) Next we come to the extract from R & I Industries Scrap book print-out in June, 2004 regarding the earlier laser engraving. This shows that laser engraving is not anything new and YAG laser is a common form of laser and it is suitable for engraving metals as well as non-metal materials.
Exhibit ‘B’ is the website of Sarju Laser Marking Pirvate Limited which speaks of laser marking Private Limited. The contact person is Bharat Patel (the respondent). There is a certificate of the ND Associate which shows that the Director is the respondent.
Exhibit ‘D’ is the Affidavit of Shri Arvindbhai Lavjibhai Patel, who is the Director of Sahajanand Laser Technology Limited. His affidavit has been produced to prove the invoices which show that the respondent had to mark the invoices for laser marking machine of the year 24.02.1997. 14.08.1998 is an invoice which is for a laser etching machine with Indensor, Chiller. In that year, there is another laser marking machine , the bill of which is of the year 1995. He has also stated that Shri Arvindbhai Lavjibhai Patel was working for his company as a marketing Head and he would sell the company machine for laser marking and engraving and thus he is aware of the technology used in their factory and he applied for the Patent.
g) Dr. D.D. Bhawalkar who had obtained Ph.D in laser from the University of Southampton, U.K. and when the Department of Atomic Research Centre (BARC) decided to start a Research Centre in the area of laser, he was the first Director. He has many other achievements to his credit. On going through the two patents, he has stated in his letter dated 10.12.2005 that there is nothing new described in the Patents. He has written to M/S Legasis Partners that the laser marker is identical to US Patent 178 and while the impugned patent has two mirrors in which the laser beam is deflected by Galvanometric deflector, in US Patent 178, the deflection is done by Acoustic deflector. He has also stated that Galvos is in the market for a long time. According to him the Raja Ramanna Centre for Advanced Technology had developed a laser marking which was identical to the invention in question and that it became operational in 1995. The two documents are enclosed by this expert. One is US Patent 178 which is for a laser marking apparatus including an acousto modulator. This includes at least one laser beam source, multichannel acoustic modulator and apparatus for directing at least one laser beam and a imaging apparatus. According to the expert, this is identical to the invention. He has also enclosed a Newsletter which contains the schematic diagram of the laser marking systems and the salient features are Nd:YAG laser, x-y Galvanometric mirrors, driver cards for the mirror, video camera and interfacing software and hardware.
h) The evidence of one Mr. Joel Cardoso. He started a company called Xcalibur Laser systems Pvt. Ltd. and Gitanjali Laser House Pvt. Ltd. and they manufacture and market laser machines used for marking & engraving on metals & non-metals. Through his affidavit, the following documents inter-alia are marked as:
(i) A letter written by Jindal Iron & Steel who are a leading manufacturer of hot rolled plates.
(ii) Letter dated 30.04.1998 where Xcalibur had issued advertisement and for the purpose, he had sent samples of laser marking on plastic, aluminium etc. This would show that the claim of the inventor that he was the first to invent a machine which would mark gold on plastic is wrong.
(iii) There is an advertisement to show that laser engraved gold objects were sold on Valentines day. This is of the year 1998.
i) The next document is the sectional elevation of Insta Mark which is identical with the sectional elevation of the invention. Insta Mark is a laser engraver for Fast, Permanent marking. The physical arrangements of the INSTAMARK is explained in a Laser Application Notes, in which it is mentioned that this is of the year 1979. This is a Nd:YAG laser. The basic system consists of a Holobeam Model 512 CW Nd:YAG laser, a scanner head laser power supply, laser cooling unit, the Q-switch, the front mirror and rear mirror and an automatically insertable aperture, a high speed electrical shutter, a photodiode energy monitor. All these components are mounted on a lightweight, rugged, extruded aluminium rail which assures accurate alignment of the optical train. This speaks of internal deionized water, to tap water which is used to cool the laser head. At p-302, it shows the product prescribed and we find it is nothing but the invention in question.
j) A letter from Mr. Yogeshwar Gupta which is the order for implant for laser marking which is signed by the respondent himself since he had a job shop for laser mark- this is dated 29.12.1997. This also contains a description of Insta mark – “what it is! and how it works?” Everything that has in the invention is found here.
k) Mr. Utpal Nandi, a qualified Engineer from the Raja Ramanna Centre for Advanced Technology for about 30 years. He has sent two patents and according to him, the patentee has not presented the facts about the prior art to the Patent Office. He has stated that a laser marker was developed from components available in the market in 1995 at the Raja Ramanna Centre. He has stated that there is no novelty or invention in the inventor and if the patentee claims that the machine is improving one, he should show where the improvement lies. He has stated that patentees complete specifications are identical and this is not possible. He has also commented about the description of the product.
Therefore the technology was known, every feature in the invention is known and the product itself was a known product. The respondent himself had sold the product prior to the date of patent. All the details had not been disclosed. The scanned pictures show that the invention and prior art are identical.
16. The following decisions were cited by Learned counsel for the applicant:-
1 AIR 1986 SC 712 “Monosanto Company Vs Coramandal Indag Products (P) Ltd.” – It was held that the emulsification was the well-known and common process. There is no discovery and no invention and Supreme Court held that to satisfy the requirement of being “publicly known” as used in clauses (e) and (f) of sec. 64(1), it is not necessary that the entire consumer public should know, it is sufficient if it is known to the persons who are engaged in the pursuit of the knowledge of the patented product or process either as men of science or men of commerce or consumers.
2. PTC (Suppl)(1) 180 (Del): “Franz Xaver huemer Vs New yash Engineers” & 1996(16)PTC 232(DB)(Del): “Ram Narain Kher Vs Ambassador Industries”— These were relied on whether Interim orders should be given.
3. PTC(SUPPL)(2) 799(Cal): “Unique Transmission co. India Ltd. Vs ESBI Transmission Pvt. Ltd. — Here the patent, which was revoked, was flexible couplings and an application for revocation was made to the Hon’ble Calcutta High Court. The grounds of challenge were 64(1) (d) (e) (f).
It was held that “No attempt has been made to describe the alleged improved type of flexible coupling in the heading and the apparent intention appears to me, to oust all other manufacturers from manufacturing flexible couplings of Vulkan couplings or Vulkan type of couplings as popularly known and manufactured and used in India since prior to the priority date of the claim. In my opinion, the patent has been obtained on false suggestions, or representations of an alleged invention when there is none to be found either in the complete specification or in the alleged claims apart from bald, vague and uncertain allegation of alleged invention, devoid of particulars of any specifications or technical datas.”
Accordingly, the learned judge has observed that flexible couplings had been manufactured by many companies before the respondent No. 1 and he had described in its complete specification. The flexible couplings had been manufactured by Vulkans of West Germany whose literatures were widely available in India. The learned Judge held that the respondent did not claim patent right to couplings itself, but to the alleged improvement without specifying what the improvements were. He observed that the whole attempt of the respondent No. 1 was to stop the people from manufacturing many flexible couplings which they have been manufacturing since long prior to April 1983 and which were only known in India. On this ground, the learned judge ordered revocation of Patent.
In the present case, at least in 1995, the respondent himself was taking job orders for laser marking machines. This applies squarely to this case.
4. AIR 1982 SC 1444 : “M/S Bishwanath Prasad Radhey Shyam Vs, M/s Hindustan Metal Industries”— where the Supreme Court held that same collection of more than one indigenous is not an invention. More importantly, the Supreme Court observed that the grant of patent does not guarantee its validity. There is no presumption of validity. If the grant is challenged, it is the duty of the patentee to defend his case and show that in fact there was an improvement made in the inventive step, or that it was neither obvious nor anticipated. The patentee is bound to meet all the challenges made against the grant of patent.
5. ORA/03/2007/PT/CH –(Order No.55/2009): “Mr. K. Manivannan Vs. Mr. Mani” There the invention was an “Improved Threshing and Separating Machine” and the Board found that there were difficulties in the constructional aspects of the prior art and the invention and based on the question whether the persons skilled in the art understand the description is sufficient to include the new technology. In the present case, prior arts have the features of the invention and there is nothing new in the features that have been claimed as new. The three experts have testified to this. We have evidence before us that the very same machine has been purchased by others prior to the date of invention.
6. A decision of the Board in TRA/01/2008 M/s Air Master Equipments India (P) Ltd., Vs. Mr. Ramesh Nana Mahtre and another in which the patent was for ‘An improved Centre Core, Intermediate core and outer frame for a diffuser for use in central air-conditioning system. In that case, the invention explains where the improvement lays by using the tests in the wind diffusing case. In the present case we have no such explanation and whatever was cited as improvement we have seen existed earlier.
17. In the circumstances, we find that all the objections raised by the applicant are sustained. The invention was already known and there is neither any novelty nor any inventive step and therefore, both the TRAs are allowed. Miscellaneous Petition Nos. 41 & 42 are disposed off.
.
(D.P.S. PARMAR) (JUSTICE PRABHA SRIDEVAN)
Technical Member (Patents) Chairman
(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)
