Ex-parte Injunction Vacated Due to Lack of Prima-Facie Case of Infringement
First Publication Date: 9th December 2009.
Asian Electronics Ltd v/s Jumbo Electric Company (Delhi High Court, 12th November, 2009)
Facts of the case:
Asian Electronics (hereinafter referred to as the plaintiff) is the holder of an Indian patent 193488, which talks about a kit for converting a fluorescent lighting fixture from inductive operation to electronic operation. The corresponding US patent can be seen here. The plaintiff stated that Jumbo Electric Company (hereinafter referred to as the defendant) was manufacturing and selling the identical conversion kits for lighting units with electronic blast operation embodying claims of the plaintiff’s patent and such a conversion unit was purchased by the plaintiff (manufactured by the defendant) from an electrical shop in Delhi. The plaintiff stated that this unit was a copy of plaintiff’s patented product and embodied the patented product of the plaintiff. The plaintiff further stated that he had not granted a license to the defendant for the use of the said patent and therefore manufacturing of lighting units and conversion kits by the defendant was unauthorized and illegal and amounted to infringement of the patent rights of the plaintiff.
The plaintiff had filed this suit for permanent injunction to restrain the defendant from infringement of the plaintiff’s patent. The plaintiff has also prayed for issue of an injunction against the defendant restraining defendant from manufacturing, selling, distributing conversion kit embodying the plaintiff’s registered patent and from infringing plaintiff’s copyright in industrial drawings in respect of lighting unit and conversion kit and sought an order for delivery up for destruction of all lighting units and conversion kits, dies, labels, printed materials such as brochures, etc. and to render accounts.
The plaintiff had moved an application for interim injunction. An ex-parte interim injunction was granted in favour of the plaintiff restraining the defendant from manufacturing, selling, distributing the lighting system or conversion kit embodying the plaintiff’s registered patent. The local commissioner was also appointed by the Court to prepare inventory of goods. Thereafter the defendant moved an application for vacation of the injunction.
Analysis by the Court:
The invention of the plaintiff relates to a conversion kit which enables a holder for a T12 tube light could be used for a T5 tube light, along with an electronic ballast. After reviewing the facts, the Court stated that the mere fact that the defendant also came up with a conversion kit does not imply that the defendant copied the same from the plaintiff’s patent. The Court stated that the plaintiff was unable to state specific inventive steps which resulted in his invention, which are non-obvious to a person of ordinary skill in the art, and which were copied by the defendant from the plaintiff’s patent.
The Court vacated the ex-parte injunction.