TEAMCODE: IPM04

SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW

MOOT COURT

BEFORE THE HON’BLE HIGH COURT OF CHENGAI

(ORDINARY ORIGINAL JURISDICTION)

CS(OS)____OF 2020

MR.JOEY……………………………………………………..PLAINTIFF

V.

FONDA AUTOMOBILE COMPANY …………………DEFENDANT

MEMORIAL ON BEHALF OF THE PLAINTIFF

 SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW MOOT COURT

TABLE OF CONTENTS

1. LIST OF ABBREVIATIONS ................................................................................ . 3

2. INDEX OF AUTHORITIES.................................................................................... 4

3. STATEMENT OF JURISDICTION..................................................................... .. 5

4. STATEMENT OF FACTS.........................................................................................6

5. STATEMENT OF ISSUES ................................................................................... 7

6. SUMMARY OF PLEADINGS.............................................................................. 8

7. PLEADINGS……………….................................................................................. 9

8. PRAYER................................................................................................................18

MEMORIAL ON BEHALF OF PLAINTIFF

SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW MOOT COURT

LIST OF ABBREVIATIONS

Phd Doctor in Philosophy

Pvt Private

Ltd Limited

HC High Court

Doc Document

CPC Code of civil Procedure

Inc Incorporation

Hon’ble Honorable

MEMORIAL ON BEHALF OF PLAINTIFF

 SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW MOOT COURT

INDEX OF AUTHORITIES

STATUES

1. INDIAN PATENTS ACT,1970

2. CODE OF CIVIL PROCEDURE,1908

BOOKS REFERRED

1. Law of Intellectual Property- S.R.Myneni

2. P. Narayanan, Patents Law(Eastern Law House)

3. Prankrishna Pal, IPR in India,General issues and Implications.

4. N.R.Subhuraman,Demystifing Intellectual Property Rights, Lexis Nexis India.

5. Elizabeth Verkey, Law of Patents.

SITES REFERRED

1. Indiankanoon.org

2. Casemine.in

3. Indiacode.in

CASES REFERRED

1. Matrix Laboratories Limited vs F.Hoffman La Roche Ltd

2. Pepsico Inc & ors. Vs Dugar spices & Eatables Pvt

3. In Matrix laboratories Limited Vs F. Hoffman La Roche Ltd

4. TVS Motor Vs. Bajaj

5. Gujarat Bottle Manufacturing Co. Ltd v Coca Cola Co

MEMORIAL ON BEHALF OF PLAINTIFF

 SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW MOOT COURT

STATEMENT OF JURISDICTION

The Counsel for the Plaintiff has approached this Hon’ble Chengai High court invoking the
jurisdiction under section 104 of the Indian Patents Act, 19701 and original civil jurisdiction under
Clause 11 of the Letter Patent for High Court of Judicature at Chennai(Jurisdictional Limits)
Act,19272. The Rights that are granted for the plaintiff under Section 48 of the Indian Patents
Act,19703 have been also infringed by the Defendant. The Counsel for the plaintiff submits that
the Chengai High court exercises proper judicature to hear and adjudicate the issue under this
matter.

1
. Section 104 —No suit for a declaration under section 105 or for any relief under section 106 or for infringement
of a patent shall be instituted in any court inferior to a district court having jurisdiction to try the suit: Provided that
where a counter-claim for revocation of the patent is made by the defendant, the suit, along with the counter-claim,
shall be transferred to the High Court for decision.

2
Clause 11 of the letter patent of Chennai Jurisdictional Act,1927 deals with Original Civil Jurisdiction

3
Section 48 – Rights of patentee

MEMORIAL ON BEHALF OF PLAINTIFF

 SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW MOOT COURT

STATEMENT OF FACTS

Mr. Joey an academician and PhD holder in vehicle system residing in the city of
chengai has commenced his work on electrical vehicle system in 2000’s and now has the patent in
his name for Electrical Powered Vehicle with Turbine Generator. In 2018, Joey had begun
approaching various companies to pitch in his patented product. Abstract of the Joey’s patent is
that an electric vehicle having an electric drive motor and an energy storage device to provide
power for the motor uses a re-charge system toincrease the range of the vehicle. The re-charge
system comprises a turbine mounted to the vehicle for rotation in the air stream generated by
forward movement of the vehicle. A generator of electrical current is driven by the turbine for
charging the energy storage device while the vehicle is in motion. The expiration of Joey’s patent
is on 20th January 2020.

Flippy Pvt. Ltd., is an Indian e-commerce company based in city of Bengu. The
company initially focused on book sales, consumer electronics, fashion etc. and thereafter
expanded its sale platform to automobile and automobile parts. Authorized dealers of Automobile
gaint like TETE, FONDA enable the customers to place their orders online. FONDA an
Automobile company based out of Bengu city as a part of new year sale commenced operations
and sales of Fonda Electrical Vehicle through Flippy.com on 1st January 2019. Monica, an
environmental activist residing in chengai city, neighbour of Joey bought a FONDA Electric
Vehicle through Flippy.com around October 2019.

On 2nd December 2019 a Sunday afternoon, Monica had invited Joey over for lunch.
Joey noticed the new Electric Vehicle and curious to know the mechanisms of it. Joey found that
the Air Tunnel was placed in the similar fashion to direct the air pass through the Turbine thereby
ensuring efficient generation of charging current produced by the turbine as in his patent . Joey
instantly regretted his decision of pitching and showcasing his inventing to the automobile giants.
Mr.Joey aggrieved by this action filed a suit of patent infringement before the Hon’ble Chengai
High Court on 15th January 2020 to stop FONDA from manufacturing and selling further electric
vehicle with Air Tunnel technology.

MEMORIAL ON BEHALF OF PLAINTIFF

 SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW MOOT COURT

STATEMENT OF ISSUES

ISSUE I

1. Whether “Chengai High Court” was the appropriate Court, before whom the suit lay.

ISSUE II

2. Whether Mr. Joey could claim patent infringement when only an element of his invention was
copied by FONDA.

ISSUE III

3. Whether Mr. Joey is entitled any relief as the suit was filed 5 days before the expiry of the
patent.

MEMORIAL ON BEHALF OF PLAINTIFF

 SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW MOOT COURT

SUMMARY OF PLEADINGS

1. That the High Court” was the appropriate Court, before whom the suit lay.

Mr.Joey has filed a suit of patent infringement in Chengai High Court and it is
humbly submitted by the plaintiff that the competent court has due jurisdiction to hear and entertain
this suit. The counsel humly submits the same based on the following grounds i.e., the Chengai
High Court possesses original civil jurisdiction to entertain the suit, territorial limits are satisfied,
and that there is no express/implied provision in the Patents Act, 1970 regarding the bar of
limitation.

2. That Mr. Joey could claim patent infringement when only an element of his invention was
copied by FONDA.

The counsel for plaintiff humbly submits that Mr. Joey can claim relief from
FONDA for patent infringement even if an element of his invention for which he has gained patent
for have been infringed as per section 48 of the Patents Act,1970 provides exclusive rights to the
plaintiff over the patented Product in which every claim is protected and the element that was
copied is an important part of the patent. The plaintiff has enough claims to stake that the actions
of the defendant are purely an infringement of his patent.

3. That Mr. Joey is entitled any relief as the suit was filed 5 days before the expiry of the patent.

The counsel for the plaintiff humbly submits that, the plaintiff is entitled to be awarded with any
relief as the suit was filed 5 days prior the expiry of the term of the patent. To substantiate the
above mentioned statement the counsel shall herein ascertain several grounds. Firstly, the plaintiff
has exclusive rights over his patent for a period of 20 years from the date of filing of patent, this
right is obtained to the plaintiff under the provisions of the patents Act,1970.

The plaintiff has also the right to get relief for the infringement of patented product even after the
expiry of the term, for the losses incurred during the term of patent .The reliefs that can be claimed

MEMORIAL ON BEHALF OF PLAINTIFF

 SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW MOOT COURT

by the patentee for the infringement are (i)An injunction and (ii)damages or accounts of profits
from the defendant.

PLEADINGS

1. Whether “Chengai High Court” was the appropriate Court, before whom the suit lay.

The counsel for the plaintiff humbly submits that the Hon’ble High court of chengai is the
appropriate and competent court for filing the suit for infringement of patent on the following
grounds,

(i)Section 104 of the Patents Act, 1970 4 which deals with the Jurisdiction for suing
in case of Patent infringement,

(ii) Territorial jurisdiction of the Chengai High Court to to entertain the suit.

1. JURISDICTION PROVISION FOR FILING SUIT FOR PATENT INFRINGEMENT

The Section 104 of the Patents Act, 1970 5 is the provision that provides for the
jurisdiction to file a suit in case of patent infringement by the Pantentee. It provides as follows,
“No suit for a declaration under section 105 6 or for any relief under section 106 7 or for
infringement of a patent shall be instituted in any court inferior to a district court having
jurisdiction to try the suit: Provided that where a counter-claim for revocation of the patent is made
by the defendant, the suit, along with the counter-claim, shall be transferred to the High Court for
decision”. In accordance to the current the issue, the suit for infringement of patent has been filed
by the plaintiff not in a court inferior to the District court and in the High court which has a original
civil Jurisdiction in case of the patent infringement.

4 Id
5 Id
6 Section 105 - Power of court to make declaration as to non-infringement
7 Section 106 -. Power of court to grant relief in cases of groundless threats of infringement proceedings

MEMORIAL ON BEHALF OF PLAINTIFF

 SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW MOOT COURT

In the case of Matrix Laboratories Limited vs F.Hoffman La Roche Ltd 8 on 1st Dec
2011 it was held that in the context of District Court as follows,

Jurisdiction of the Court-Under Section 104 9 of the Patents Act, Suit for
infringement of a Patent or Suit for declaration under Section 105 10 or for any relief under Section
10611 shall be instituted in "a District Court" having jurisdiction to try the suit"

As per Section 2(1)(e) of the Patents Act,1970 12 "District Court" has the meaning assigned to that
expression by the Code of Civil Procedure. Section 2(4) of the Code of Civil Procedure defines
"district" as "the local limits of the jurisdiction of principal Civil Court of original jurisdiction
(hereinafter called a District Court), and includes the local limits of the ordinary original civil
jurisdiction of a High Court." Since definition of "District" in the Code of Civil Procedure is
inclusive of High Court, the ordinary civil jurisdiction of High Court will have the jurisdiction to
entertain the suit for infringement of Patent.

2. TERRITORIAL JURISDICTION OF THE CHENGAI HIGH COURT

The competency of a court to decide an issue of infringement of patent depends

upon territorial, pecuniary and subject jurisdiction. Territorial jurisdiction depends upon the area
of location of the infringer or the area of sale or offer for sale of the infringing products or where
the threat of sake or infringement is felt. In the current scenario the infringment was felt by the
plaintiff at his friend Monika’s home located at chengai which comes under the jurisdiction of
Chengai High Court . Hence the plaintiff has filed the suit before this court which is competent
court and moreover Maintainable.

The Section 20 of the Code of Civil Procedure (CPC) 1908 13 governs the
applicable jurisdiction to file suits in civil proceedings. In the case of trademarks, copyrights and
Patent disputes this section provides the Original Civil Jurisdiction . The above mentioned

8 Indiankanoon.org/doc/59228363/
9 Id
10 Id
11 Id
12 Section 2(1)(e) of the Patents Act,1970-District Court
13 Section 20 of the Code of Civil Procedure (CPC) 1908-Original civil Jurisdiction

10

MEMORIAL ON BEHALF OF PLAINTIFF

 SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW MOOT COURT

provisions well establishes the procedures for filing suits in terms of patent infringement and their
jurisdictions.

In the case of Pepsico Inc & ors. Vs Dugar spices & Eatables Pvt14 Ltd the High
court of Delhi held that, “the present suit is an action for passing off in which neither the Plaintiff
nor any of the defendants voluntarily resides or carries on business within the local limits of
Delhi. Consequently, neither section 20 (a) nor Section 20(b) CPC applies. The Plaintiff seeks to
find the territorial jurisdiction of this Court in terms of Section 20(c) CPC. In other words,
according to the Plaintiff the cause of action, wholly or in part, arises within the jurisdiction of
this Court”. Thus the jurisdiction of the plaintiff in the current issue is chengai and the court is the
High Court of Chengai.

As from the above stated the plaintiff has sufficient grounds for filing a suit of patent infringement
in the Chengai High court since there are two provisions attracting for the jurisdiction. The other
reasons are as follows,

1. the Residence of the plaintiff is at Chengai

2. The e commerce company Flippy has its delivery branches all over India and has also delivered
the infringed product at Chengai which was also acknowledged by the plaintiff himself.

3. The Official website of the ecommerce company Flippy namely Flippy.com which is used by
the FONDA company to sell its products, is and can be accessed from chengai.

In accordance to the above stated things the suit filed by the plaintiff will have a territorial
jurisdiction in the CHENGAI HIGH COURT before whom the suit lay.

Thus the Chengai High Court is the appropriate Court before whom the suit lay.

14 indiankanoon.org/doc/50552763/

11

MEMORIAL ON BEHALF OF PLAINTIFF

 SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW MOOT COURT

2. Whether Mr.Joey could claim patent infringement when only an element of his invention
was copied by FONDA

The counsel for plaintiff humbly submits that Mr.joey can claim relief from
FONDA for patent infringement even if an element of his invention for which he has gained patent
for have been infringed as per section 48 of the Patents Act,197015 provides exclusive rights to the
plaintiff over the patented Product in which every claim is protected and the element that was
copied is an important part of the patent. The plaintiff has enough claims to stake that the actions
of the defendant are purely an infringement of his patent.

1. EXCLUSIVE RIGHTS OF PATENTEE OVER THE PATENT

The section 48 of the Patents Act,1970 16 states that “where the subject matter of the patent is a
product or process, the exclusive right to prevent third parties,who do not have his consent , from
the act of making, using, offering for sale, selling or importing that product in India”

In Matrix laboratories Limited Vs F. Hoffman La Roche Ltd17 the court contented that

“26. The patents Act defines infringement indirectly. A combined reading of sections 10(4)(c) 18
and 48 detail the scope of the monopoly rights of the patentee for which protection can be claimed.
Any intrusion into these rights will amount to an infringement.”

In the present case the section 10(a) and (d) along with section 48 details the scope of the monopoly
rights of the patentee. The third parties in this case have obtained no consent from the plaintiff for
manufacturing or selling of the same. FONDA company has sold the products through means of

15 Id
16 Id
17Supra
18Section 10(4)(c)states as “end with a claim or claims defining the scope of the invention for which protection is

claimed”

12

MEMORIAL ON BEHALF OF PLAINTIFF

 SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW MOOT COURT

an E- Commerce website (Flippy.com) which has its delivery options throughout the country.
Through means of the act performed the defendant the plaintiff has incurred a heavy loss and the
value of his invention was severely damaged.

Onset of the proven infringement the plaintiff has gained the right to sue the defendant for
his act of patent infringement.

2. COPIED ELEMENT CONSTITUTE IMPORTANT PART IN THE

PLAINTIFF’’S PATENT

The plaintiff Mr.joey has a patent for “electric powered vehicle with turbine
generator” which uses turbine mounted with an energy storage device which helps to increase the
range of the vehicle. The defendant FONDA has used the “Air Tunnel Technology” which is an
important element of the plaintiff”s patent. It is further stated that the defendant for manufacturing
his Electric motor vehicle had used the primary element technology invented by plaintiff. The
defendant shall not make any claims stating that it was only a simple element that was used since
the TURBINE MOTOR is the primary source for the functioning of the vehicle.

The Madras High court in the TVS Motor Vs. Bajaj 19 held that “In construing an allegation of
infringement, what is to be seen is whether the alleged infringement has taken the substance of the
invention ignoring the fact as to omission of certain parts or addition of certain parts.”

The infringement of patents means the violation of the monopoly rights conferred by the grant..A
patent confers the exclusive right on the patentee to make, distribute or sell the invention in India.
An infringement would be when any of three rights is violated

The claim number 12 of the patent 20 describes that “An electric vehicle as claimed in claim 7
including an air tunnel having an inlet at the front of the vehicle and an outlet toward the rear of
the vehicle, the air tunnel housing the turbine so that air is directed past the turbine.” hence making

19 TVS Motor company Limited Vs. Bajaj Auto Limited(indiankanoon.org/doc/1721105/)

20 Facts of the Memorandum

13

MEMORIAL ON BEHALF OF PLAINTIFF

 SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW MOOT COURT

it evident that the primary structure of the vehicle is being built upon the ‘Air Tunnel Technology’
making it the source for the functioning of the Turbine Motor and hence results in increasing the
vehicle’s efficiency and performance. There shall be no substitute made in this setup, if made will
not be efficient as the one plaintiff had invented.

Thus, Mr. Joey could claim patent infringement even though only an element of his
invention was copied by FONDA.

3. Whether Mr.Joey is entitlted any relief as he suit was filed 5 days before the expiry of
them term?

The counsel for the plaintiff humbly submits that, the plaintiff is entitled to be awarded with any
relief as the suit was filed 5 days prior the expiry of the term of the patent. To substantiate the
above mentioned statement the counsel shall herein ascertain several grounds.

Firstly, the plaintiff has exclusive rights over his patent for a period of 20 years from the date of
filing of patent, this right is obtained to the plaintiff under the provisions of the patents Act,1970.

The plaintiff has also the right to get relief for the infringement of patented product even after the
expiry of the term, for the losses incurred during the term of patent .The reliefs that can be claimed
by the patentee for the infringement are (i)An injunction and (ii)damages or accounts of profits
from the defendant.

1. TERM OF PATENT VALID TO CLAIM RELIEF

The counsel for the plaintiff humbly submits that the plaintiff has a patent for in name of
“ELECTRIC POWERED VEHICLE WITH TURBINE GENERATOR” and the expiry of the said
patent is on January 20th 2020. The issue before the Hon’ble court is that the plaintiff can claim

14

MEMORIAL ON BEHALF OF PLAINTIFF

 SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW MOOT COURT

relief as the suit was filed 5 days before the expiry of the patent and it is substantiated by the
provisions of the Patents Act which reads as

“Section 53 of the patents Act,1970 21

“Subject to the provisions of this Act, the term of every patent granted, after the commencement
of the Patents (Amendment) Act, 2002, and the term of every patent which has not expired and
has not ceased to have effect, on the date of such commencement, under this Act, shall be twenty
years from the date of filing of the application for the patent.”

According to the Plaintiff by virtue of Section 48 read with Section 53 of the patent Act
Plaintiff‟s Patent Certificate No. 213608 dated 9th January 2008 is valid for a term of 20 years
with effect from 15th September 2000, the date on which the
PCT International Application was filed. Therefore the Plaintiff has the exclusive right to prevent
third parties who do not have the Plaintiff‟s prior consent, from making, using, offering for sale,
selling and/or importing for these purposes …… the Plaintiff was entitled to claim damages on
account of infringement of its patent. When the term of patent has expired and infringement
occurred during the term of the patent, a suit can be instituted during the term or even after the
expiry of the term.

Section 48 of the patents Act,1970 where the subject matter

of the patent is a product or a process, the patentee (Mr. Joey) has exclusive right to prevent third
parties from the act of making, using, offering for sale, selling or importing for those purposes
without his consent India. The plaintiff has himself acknowledged the infringement of his patent
without the use of any third parties to stake the claim. Thus from the above statements it is evident
that the suit filed by the plaintiff is legal validity and are within the scope of the patent Act.

The plaintiff is the sole owner of his product, Electric

powered vehicle with Turbine Generator. The said FONDA automobile company has violated the
patents Act and have produced a similar product with the same technology the plaintiff has already

21 Section 53-term of patent

15

MEMORIAL ON BEHALF OF PLAINTIFF

 SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW MOOT COURT

obtained patent for. The suit filed by the plaintiff is legally procurable since it has been filed before
the expiry of the patent.

2. RELIEF CLAIMED FOR INFRINGEMENT

The Relief claimed by the plaintiff is an injunction which is

the relief provided under section 108 of the patents Act,1970 22. A patent is to encourage and
develop new technology and industry. An inventor has exclusive right to keep it secretly. He may
disclose the new invention only if he is rewarded. The patent is granted for a statutory period and
after the expiry of monopoly period others can use the invention or improve upon it which has also
upheld in the case of Gujarat Bottle Manufacturing Co. Ltd v Coca Cola Co 23

According to section 108 of the patent Act Reliefs in suit for infringement.—(1) The reliefs which
a court may grant 1970, in any suit for infringement include an injunction (subject to such terms,
if any, as the court thinks fit) and, at the option of the plaintiff, either damages or an account of
profits.

The plaintiff claims Permanent injunction to stop FONDA automobile company from
manufacturing and selling further electric vehicles with “Air tunnel” technology because there has
been a infringement of patented product that uses this technology which is the main part of the
patent for the rotation of turbine to recharge the energy storage which in turn will help in
increasing the range of the vehicles. In actions for patent infringement, the claimant can seek
preliminary relief in the form of a preliminary injunction, if the following conditions are satisfied:
There is a prima facie infringement on the part of the defendant. The Plaintiff will suffer an
irreparable injury if an injunction is denied.

From the above statements the counsel for the plaintiff pleads before this Honourable court that
the suit for patent infringement against the defendant for procuring the acts of manufacturing and
selling the goods for which the plaintiff had obtained patent for. Thus the plaintiff is entitled to

22Section 108 of the Patents Act,1970- Reliefs in suit for infringement

23
(1995) 5 SCC 545).

16

MEMORIAL ON BEHALF OF PLAINTIFF

 SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW MOOT COURT

receive damages that have been incurred by himself through the means of an injunction that is
seeked as a remedy by filing this suit.

Thus, Mr. Joey is entitled for any relief even though he has filed the suit 5 days before the
expiry of term of patent.

17

MEMORIAL ON BEHALF OF PLAINTIFF

 SURANA & SURANA AND SHAASTRA IITM INTELLECTUAL PROPERTY LAW MOOT COURT

PRAYER

Wherefore in light of the issues raised, arguments advanced and authorities cited, it is humbly
prayed that this Hon’ble Court may be pleased to adjudge and declare that:

1.The Chengai High court is the Appropriate court for filing the suit for patent infringement by the
plaintiff.

2. The Plaintiff can claim for patent infringement even though only one element of the patented
product has been infringed

3. The Plaintiff is entitlted for relief eventhough the suit was filed 5 days before the expiry of the
Term of patent.

4. Grant an Permanent injunction against the defendant in order to restrain the defendant for
manufacturing, marketing, selling, offering for sale etc in Indiska any product which infringes the
plaintiff’s suit patents.

Or

Any other order as it deems fit in the interest of equity, justice and good conscience. For This Act
of Kindness, the plaintiff Shall Duty Bound Forever Pray.

The Counsel on Behalf of Mr.Joey (Plaintiff)

18

MEMORIAL ON BEHALF OF PLAINTIFF