Plaintiff Memorial

10TH MAHAMANA MALAVIYA NATIONAL MOOT COURT COMPETITION 2023 TC-34
TEAM CODE- TC-34
IN THE HON’BLE HIGH COURT OF KASHI

………………………………….…………………………………………………………….
------------------ No. ---------------OF 2023

( --------------------------------------------------- )
………………………………….…………………………………………………………….
IN THE MATTER OF:
JEDI CORPORATION ………… (PLAINTIFF)
VERSUS
1- GOVERNMENT OF TATOOINE ………… (DEFENDANT NO. 1)
2- PALPATINE GALACTIC EMPIRES ………… (DEFENDANT NO. 2)
3- DR. ANAKIN SKYWALKER ………… (DEFENDANT NO. 3)
MOST RESPECTFULLY SUBMITTED,

COUNSELS APPEARING ON BEHALF OF THE PLAINTIFF
10TH MAHAMANA MALAVIYA NATIONAL MOOT COURT COMPETITION 2023 TC-
34
Page 1 of 29
TABLE OF CONTENT
TABLE OF CONTENTS …………………………………………………………………
LIST OF ABBREVIATION…………………………………………………………….
INDEX OF AUTHORITIES ……………………………………………………………
STATEMENT OF JURISDICTION……………………………………………………
STATEMENT OF FACTS ……………………………………………………………..
STATEMENT OF ISSUES…………………………………………………………….
SUMMARY OF ARGUMENTS ………………………………………………………
ARGUMENTS ADVANCED …………………………………………………………
I: YES, THE PATENT GRANTED TO THE PLAINTIFF IS VALID
1.1 DEFINITION OF IPR 1.2

WHAT IS PATENT?
1.3 WHAT IS INVENTION?
1.4- ELEMENTS OF PATENTABILITY
1.4.1. NOVELTY
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1.4.2. INVENTIVE STEP OR (NON-OBVIOUSNESS)
1.4.3. INDUSTRIAL APPLICABILITY (UTILITY)
1.5 SCOPE OF PATENTABILITY
1.5.1 NON-APPLICABILITY OF SECTION 3 (d) OF THE PATENTS ACT, 1970

II: YES, THE DEVICE INTRODUCED BY DEFENDANT PALPATINE GLACTIC
EMPIRE INFRINGES THE PATENT NO- 22101996 OF THE PLAINTIFF
2.1 WHAT IS INFRINGEMENT OF PATENT?
2.2 RIGHTS OF PATENTEE
2.3 ARTICLE 28 OF THE TRIPS AGREEMENT
2.4 RELIEFS FOR INFRINGEMENT OF PATENTS
2.5 DOCTRINE OF EQUIVALENCE
III: YES, DEFENDANT NO. 3 DR. ANAKIN SKYWALKER IS LIABLE FOR

SHARING CONFIDENTIAL INFORMATION, TECHNICAL KNOW-HOW,
TRADE SECRETS AND UNFAIR COMPETITION
3.1 CONFIDENTIAL INFORMATION
3.2 TRADE SECRET
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3.3 SPRING BOARD DOCTRINE
3.4 UNFAIR COMPETITION
3.5 NON DISCLOSURE AGREEMENT (NDA )
PRAYER…………………………………………………………………………………
LIST OF ABBREVIATIONS
acc. According
AIR All India Reporter
Art. Article
Appl. Application
corp. Corporation
et al. And others
est. Established
HC High Court
Ind. Industrial
i.e. That is
Info. Information
IPR Intellectual Property Rights
KNWL Knowledge
SC Supreme Court
Sec. Section
TRIPS Trade – Related Aspects of
Intellectual Property Rights
Tech.. Technology
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Ors. Organization
NDA Non – Disclosure Agreement
Pvt. Ltd. Private Limited
R&D Research and Development
US United State
v., vs. Versus
WIPO World Intellectual Property
Organization
INDEX OF AUTHORITIES
CASES
INDIAN CASES
• Ram Narain Kher v. Ambassador Industries New Delhi, AIR 1976 Delhi 87
• Gopal Glass Works Ltd. v. Assistant Controller Of Patents, (2006) 08 CAL CK 0044
• Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1972) 2 SCC 511
• Ravi Kamal Bali v. Kala Tech, (2008) 38 PTC 435 (Bom. )
• Raj Prakash v. Mangat Ram Chowdhry, ILR (1977) 2 Del 412
• Beecham Group Limited v. Bristol Laboratories Private Limited, (1968) 118 CLR
618
• Bajaj Auto Limited V. Tvs Motor Company Limited Jt, 2009 (12) SC 103
• Lallubhai Chakubhai Jariwala v. Chimanlal Chunnilal And Co., AIR 1936
Bombay 99
• American Express Bank Ltd. v. Ms. Priya Puri, (2006) III LLJ 540 (Del)
• Burlington Home Shopping Pvt Ltd v. Rajnish Chibber & Anr., 1995 PTC (15) 278
• Inphase Power Technologies v. Abb India Limited, Miscellaneous First Appeal
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No.3009/2016 in M.F.A No.3009/2016 (Karnataka High Court)
• Escorts Const. Equipment Ltd. V. Action Const. Equipment P. Ltd. S. No.
533/98 Decided on 16.10.1998 MANU/DE/ 0185/1999
• FMC Corporation & Ors. vs Natco Pharma Limited, CS (COMM) 349/2022
• Genetech Patent case (1987) R.P.C. 553
FOREIGN CASES
• Graham et al. v. John Deere Co. of 2 Kansas City et al, 383 U.S. 1 (1996)
• Morgan v. Seaward, 1 WPC 167
• Otto v. Linford, 46 L.T. (N.S.) 35
• Winans v. Denmead, 56 U.S. 330 (1853)
• Sage Products Inc v. Devon Industries Inc, 126 F.3d 1420 (Fed. Cir. 1997)
• John Richard Brady v. Chemical Process Equipment Pvt. Limited (“Brady
Case”) (AIR 1987 Delhi 372)

• Suhner v. Transradio Ltd, [1967] R.P.C. 329
• Faccenda Chicken Ltd. v. Fowler, (1986) IRLR 69, CA
STATUTES
• THE PATENTS ACT, 1970
• THE PATENTS RULES, 2003
• THE NATIONAL INNOVATION ACT, 2008
• THE PATENT AMENDMENT ACT, 2005
• CODE OF CIVIL PROCEDURE, 1908
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III. BOOKS/JOURNAL
• INTELLECTUAL PROPERTY RIGHTS – LAWS AMD PRACTICES, THE
INSTITUTE OF COMPANY SECRETARIES OF INDIA (ICSI)
• RAMA SARMA: A COMMENTARY ON INTELLECTUAL PROPERTY
RIGHTS
• BY DR. MADHU SUDAN DASH, TEST OF NOVELTY UNDER INDIAN
PATENT LAW: A CRITICAL ANALYSIS, VOLUME-4 GJRA (2015)
• BY DR. PRATIVA PANDA, INFRINGMENT OF PATENT RIGHTS IN INDIA
VOLUME 5, PARIPEX IJR (2016)
IV. DECLARATION/CONVENTION
• THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL
PROPERTY, 1967
• PATENT CO-OPERATION TREATY, 1978
• TRADE RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS
( TRIPS )
• THE WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO)

• WIPO MODEL PROVISIONS ON PROTECTION AGAINST UNFAIR
COMPETITION
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V. MISCELLANEOUS
• www.manupatra.com
• www.scconline.com
• www.wipo.int
• www.meity.gov.in
• www.mca.gov.in
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STATEMENT OF JURISDICTION
The Hon’ble High Court of Kashi has its Jurisdiction in this matter
Court for hearing of interim Injunction application under order 39
Rules 1 & 2 Code of Civil Procedure, 1908.
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STATEMENT OF FACTS
BACKGROUND
1. Republic of Tatooine, a lower-middle income country with high population density is
located in the African continent. The extremely hot and arid climate, frequents sand
storms and large scale use of fossil fuels have severely impacted the air quality of
Tatooine leading to several respiratory diseases such as chronic obstructive pulmonary
disease, asthma and lung cancer among its inhabitants.
KYBER CRYSTAL
2. Kyber crystal, a naturally occurring native substance of Tatooine has the ability to
purify air but in limited closed premises by virtue of its chemical property ‘force’ and a
process called Negative Air Ionization (NAI). The crystal and its air purifying qualities
have been traditionally known and elaborately discussed in its ancient texts.
JEDI CORPORATION
3. Coruscant based multinational company called Jedi Corporation holds largest patent
portfolios of environmental devices. It is a knowledge based company with highest
R&D expenditure in the world on green technology.
4. Dr. Anakin Skywalker, a scientist of tatooine nationality works in the R&D unit of Jedi
Corporation. A team lead by him discovered the Beta Crystalline form of Kyber
Crystal which they monikered as ‘Super Kyber Crystal’
5. In the press release of Jedi Corporation, it stated that the Beta Crystalline form works
more efficiently than the already known Alpha Crystalline form and that Super Kyber
Crystal can purify air over large open areas which was not possible hitherto.
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6. In order to discharge this function Super Kyber Crystal was used inside a device called
‘Lightsaber’. Thus a new device called An Air Filtration device based on Beta
Crystalline form of Kyber Crystal was invented and patent for the same was filed in multiple
jurisdiction one of which was filed in Tatooine Patent office on 30th March, 2010. And finally
patent was granted on 22nd October, 2012 as TA 22101996.
PALPATINE GALACTIC EMPIRES
7. Tatooine based Palpatine GE is an environmental products company whose R&D unit

‘Darth Sidious’ which studies and seeks to find out new wage of utilizing air
purification properties of Kyber Crystal.
8. Upon knowledge of Jedi Corporation’s patent, it filed a post-grant opposition against

the said patent but it was dismissed for non-prosecution and non-adherence with the
timelines of the Patent Rules, 2003.
9. In 2020, upon coming to Tatooine and knowing about the bad quality of air and
unavailability of lightsaber, Dr. Anakin Skywalker decided to leave employment at
Coruscant and work in tatooine. He joined R&D unit of Palpatine GE and after two
years introduce a device called ‘Darksaber’ which could purify air over large open
spaces. A press release was issued which disclosed that Darksaber is a state-of-the-art
air filtration device that works on Negative Air Ionisation technology. Application for
grant of patent for the same was filed in TPO in 2021.
10. Upon knowledge of the said product a cease-and-desist notice was sent by Jedi Corp. to
Palpatine GE seeking cease of manufacturing, selling, and distribution of Darksaber. A
reply for the same was filed by Palpatine GE contending non-infringement of
TA22101996 and stating the said patent as invalid. Jedi Corporation also issued notice
to Dr. Anakin for sharing its proprietary information with Palpatine GE.
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11. In these circumstances, Jedi Corp. has filed a quia timet action before the High Court of
Kashi, seeking a decree of permanent injunction restraining Palpatine GE from
manufacturing, selling, or otherwise dealing with ‘Kyber Crystals’, ‘Super Kyber
Crystals’ and ‘Darksaber’ as would infringe patent no. TA 22101996. Jedi Corp. has
also impleaded the Government of Tatooine as a Defendant in the suit. In response to
the quia timet action, Palpatine GE has filed a counter claim seeking revocation of Jedi
Corp.’s patent. A suit has also been filed by Jedi Corp. against Dr. Skywalker seeking
restraint on use of its confidential information, technical know-how, trade secrets and
unfair competition.
ARGUMENTS PRESENTED
ISSUE 1: WHETHER THE PATENT GRANTED TO THE PLAINTIFF IS VALID?
==================================================================
ISSUE2: WHETHER THE DEVICE INTRODUCED BY THE DEFENDANT

PALPATINE GE INFRINGES THE PATENT NO. TA- 22101996 OF THE
PLAINTIFF JEDI CORPORATION?
==================================================================
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ISSUE 3: WHETHER DEFENDANT NO. 3 DR. SKYWALKER LIABLE FOR

SHARING CONFIDENTIAL INFORMATION, TECHNICAL
KNOWHOW, TRADE SECRETS AND UNFAIR COMPETITION?
=================================================================
ARGUMENTS ADVANCED
ISSUE- 1: YES, THE PATENT GRANTED TO THE PLAINTIFF IS VALID
1.1 DEFINITION OF IPR
1. WIPO Convention, Stockholm, 1967 defines IPR as “Intellectual Property” shall

include the rights relating to:
(1) literary, artistic and scientific works,

(2) performances of performing artists, phonograms, broadcasts,
(3) inventions in all fields of human endeavor,
(4) scientific discoveries,
(5) industrial designs,
(6) trademarks, service marks and commercial names and designations
(7) protection against unfair competition
And all other rights resulting from intellectual activity in the industrial, scientific, literary or
artistic fields.1
1.2 WHAT IS PATENT?

1 Article 2 (viii) of WIPO Convention, Stockholm (1967)
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2. A Patent is an official document given to an inventor by the Government allowing him

to exclude anyone else from commercially exploiting his invention for a limited
period, which is 20 years at present. 2 As per the Patents Act, 1970, the term ‘patent’
connotes ‘a patent of any invention granted under the (Patents) Act, 1970’.3
3. DEFINITION OF PATENT BY WIPO

“A patent is an exclusive right granted for an invention, which is a product or a process
that provides, in general, a new way of doing something, or offers a new technical solution
to a problem. To get a patent, technical information about the invention must be disclosed
to the public in a patent application.”
4. DEFINITION AS PER TRIPS AGREEMENT

‘Patent shall be available for any invention, whether products or processes, in all fields of
technology, provided that they are new, involve an inventive step and are
capable of industrial application.’ 4
1.3 WHAT IS INVENTION?
5. According to Section 2(1)(j) of The Patents Act, 1970, the term ‘invention’ connotes
“a new product or process involving an inventive step and capable of industrial
application’’ Thus, the definition itself figures out that in order to get a grant of patent
for any invention the invention must pass the three criteria of patentability, i.e.,
1. The invention must be a new product or process,

2 The Institute Of Company Secretaries Of India, Intellectual Property Rights – Laws And Practices,
Module 3 , Elective Paper 9.3, Page 93 (2020)
3 The Patents Act, 1970, § 2(1) (m),
4 Art. 27 (1) TRIPS Agreement,
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2. It must involve an inventive step,

3. It must be capable of industrial application.
1.4- ELEMENTS OF PATENTABILITY
For a grant of patent, the invention must fulfil the following three criteria:
1. Novelty
2. Inventive step (non-obviousness) and
3. Industrial applicability (utility) 5
1.4.1 NOVELTY
6. The first test of patentability is Novelty, i.e., the invention must be new and not
similar to any other inventions or existing products. According to Section 2 (1) (l) of
The Patents Act, 1970, the term ‘new invention’ connotes “any invention or
technology which has not been anticipated by publication in any document or used in
the country or elsewhere before the date of filing of patent application with complete
specification, i.e., the subject matter has not fallen in the public domain or that it does
not form part of the state of the art”.
7. In Ram Narain Kher v. Ambassador Industries, New Delhi,6 the Court observed that
it is equally true that even when the invention “was not itself new” but “the Particular
use of it for the purpose described in combination with the other elements of the
system, and producing the advantageous results”, would be a sufficient element of
5 The Institute Of Company Secretaries Of India, Intellectual Property Rights – Laws And Practices, Module
3 , Elective Paper 9.3, Page 99 (2020)
6 AIR 1976 Delhi 87
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novelty to support the patent. The Court upheld the contention on behalf of the
plaintiff that the claim when reading as a whole does disclose an improvement over
the already existing coolers.
8. The beta crystalline form of Kyber Crystal i.e. Super Kyber Crystal under certain
conditions has been found to be having certain advantageous properties. It is stated
that the beta crystalline form is better processable, better storable, and more
thermodynamically stable7.
9. The naturally occurring substance Kyber Crystal could purify in limited area only.
Therefore, it was used in homes and other closed premises for air purification 8. The
subject invention of Jedi Corporation possess novelty as it can purify air over large
open areas which was not possible hitherto. 9
10. It was observed in the case of Gopal Glass Works Ltd. v. Assistant Controller Of
Patents10 that for an invention to be patented it must be new and original. The product
or invention must be sufficiently original as well.
11. In the current case, the device invented by the plaintiff i.e. Lightsaber amplifies and
multiplies the ‘force-field’ of the crystal which enables it to cover a larger area. 11
Earlier, many attempts had been made to amplify the effect of the crystal and distillate
the ‘force’ that gives Kyber Crystal its unique qualities but without any
7 ¶ 14, Annexure No. 1, Moot Proposition

8 ¶ 2, Moot Proposition
10 (2006) 08 CAL CK 0044
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success.12 This itself shows that “An Air Filtration Device Based on Beta
Crystalline Form of Kyber Crystal” which was invented by Jedi. Corporation is a
new invention. There was no such device available in the world which could purify
air over a large open areas. Therefore, the ‘Lightsaber’ which is an Air Filtration
Device Based on Beta Crystalline Form of Kyber Crystal possess novelty and thus, a
‘new invention’.
1.4.2. INVENTIVE STEP OR (NON-OBVIOUSNESS)
12. The second crucial test is Non-obviousness i.e., the invention must involve an
inventive step. According to section 2(1)(ja) of The Patents Act, 1970 the term
‘inventive step’ connotes ‘a feature of an invention that involves technical advance
as compared to existing knowledge or having economic significance or both and that
makes the invention not obvious to a person skilled in the art.’
13. The subject invention of the plaintiff i.e., Lightsaber involves technical advance as it
uses an apparatus and sophisticated vent networks which routes the unfiltered air into
and purified air away from the force-field of the crystal. 13
Apart from this it uses
amplifiers which helped in amplifying and multiplying the ‘force-field’ of the crystal
enabling it to use over large open places which was not possible hitherto. 14 Further, it
was of economic significance for Jedi Corporation as it was being exported to high
income countries. Thus, Lighsaber involves an inventive step.
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14. The US Supreme Court has discussed the aspects involved in the non-obviousness
analysis in the landmark case Graham et al. v. John Deere Co. of Kansas City et al. 15.
Three factors were laid down as tests for which should be looked into while
determining obviousness, these are commonly known as Graham factors:
1. the scope and content of the prior art;

2. the differences between the prior art and the claims at issue; and
3. the level of ordinary skill in the pertinent art.
Apart from the above factors the US Apex Court also laid down secondary considerations
as:
1. commercial success of the invention,

2. long felt but unsolved need, and,
3. failures of others could serve as evidence of non-obviousness.
15. The subject invention of Jedi Corporation was commercially successful as it was being
exported to markets of high income countries. Further, there was a need for a device
from a very long time which could purify air not only in closed spaces but also in
large open space taking into consideration the need for a healthy environment for the
wellbeing of the people. Many attempts had been previously made to develop such a
device but without success. Thus the success of Jedi Corporation in inventing such a
device which others have failed to do and which ultimately solved the long felt need
makes its invention of Lightsaber a non-obvious invention.
1.4.3. INDUSTRIAL APPLICABILITY (UTILITY)
15 383 U.S. 1 (1996)

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16. For an invention to be patentable the third requirement is that it should be useful.
Industrial applicability as defined states that “the invention is capable of being made
or used in an industry”.16
17. An invention is capable of industrial application if it satisfies following three

conditions, cumulatively:-
• can be made;
• can be used in at least one field of activity;
• can be reproduced with the same characteristics as many times as necessary.17
18. In Morgan v. Seaward18, the Court held that if the invention was of any use to the
public it would be a sufficient ground of patentability. In Otto v. Linford19, the Court
felt that so far as he question of utility was concerned even a very little amount if it would
be taken to be sufficient to brand it as useful for the purpose of grant of patent.
19. In Genetech Patent case20, Whitford J declared the law on the point “It is trite law
that you cannot patent a discovery, but if on the basis of that discovery you can tell
people how it can be usefully employed, then a patentable invention may result.”
16 The Patents Act, 1970, § 2(1) (ac)

17 The Institute Of Company Secretaries Of India, Intellectual Property Rights – Laws And Practices, Module 3 ,
Elective Paper 9.3, Page 100 (2020)
18 1 WPC 167
19 46 L.T. (N.S.) 35
20 (1987) R.P.C. 553
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20. The device invented by the plaintiff Jedi Corporation i.e. Lightsaber possess utility as
it could purify air over large areas and hence lead to a safe and healthy environment
thereby preventing respiratory and other related problems.
1.5 SCOPE OF PATENTABILITY
In addition to the aforementioned pre-requisites of novelty, inventive step and

industrial application, under section 3 and 4 of The Patents Act, 1970 defines specific
non-patentable subject matter for which patent cannot be granted.
1.5.1 NON-APPLICABILITY OF SECTION 3 (d) OF THE PATENTS ACT, 1970
21. Section 3 (d) of The Patents Act, 1970 bars, “the mere discovery of a new form of a
known substance which does not result in the enhancement of the known efficacy of
that substance or the mere discovery of any new property or new use for a known
substance or of the mere use of a known process, machine or apparatus unless such
known process results in a new product or employs at least one new reactant.”
22. Section 3(d) of The Patent Act, 1970 does not apply to the present case. The
invention of beta crystalline form of Kyber Crystal is not a mere discovery of a new
form of a known substance but an invention with an inventive step involving human
intervention. Beta crystalline form of Kyber Crystal is superior to its alpha crystalline
form which was known hitherto.21
23. Although earlier the substance Kyber Crystal could purify air but it was limited to
closed premises only. It was ineffective for the external environment as it still
remained polluted leading to various respiratory and other related diseases. There was

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a long felt and unsolved need of a device which could be helpful in purifying air in open
places too.
24. The beta crystalline form as discovered by the plaintiff Jedi Corporation has better
potency than the alpha crystalline form. Moreover, the beta crystalline form is far
more suitable for the preparation and formation of air purification systems. The device
invented by Jedi Corporation i.e. Lightsaber uses the beta crystalline form which could
purify air in open areas too and thus, it could be now be used to purify air in large
open spaces also. This fact should be taken into consideration while deciding on the
enhanced efficacy of the subject substance.
25. The Applicant has not filed the present application for claiming patent over the beta
crystalline form of Kyber Crystal but rather, for patent over a device consisting of an
elaborate apparatus of which the beta crystalline form of Kyber Crystal is merely one
component. The subject invention consists of not only the Kyber Crystal but also vents
and amplifiers which helps it to amplifies and multiplies the ‘force-field’ of the crystal
which enables it to cover a larger area. 22
26. Therefore, it is humbly submitted before the Hon’ble Court that the subject invention
Lightsaber results in the enhancement of efficacy as well as employs a new reactant.
Thus, Section 3 (d) of the Patents Act, 1970 is not applicable to the present case. The
subject invention forms the subject matter of a patent and fulfills all the legal criteria
of patentability. Hence, the patent granted to the plaintiff for its invention is valid.
ISSUE 2: YES, THE DEVICE INTRODUCED BY DEFENDANT PALPATINE

GLACTIC EMPIRE INFRINGES THE PATENT NO- 22101996 OF THE
PLAINTIFF

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2.1 WHAT IS INFRINGEMENT OF PATENT ?
27. The term "patent infringement" refers to the violation of the patent owner's exclusive
rights. Patent rights are the exclusive rights granted by the government to an inventor
over his invention for a limited period of time. In other words, if any person exercises
the exclusive rights of the patent holder without the patent owner’s authorization then
that person is liable for patent infringement. 23 Section 104-114 of the patents act, 1970
provide guidelines for patent infringement.
2.2 RIGHTS OF PATENTEE
28. A grant of Patent in India gives the Patentee the exclusive model to utilize or make the
patented invention or utilize the patented procedure related to the invention. Certain
Rights and Obligations of Patentee are enshrined under the Patent Act, 1970. Section
48 (a) of the Act grants the following rights to the patentee in the case of a product
patent, the following actions would amount to infringement:
1. making,
2. using,
3. offering for sale,
4. selling, or
5. importing for these purposes, the product in India without the permission of the
patentee. 24
23 The Institute Of Company Secretaries Of India, Intellectual Property Rights – Laws And Practices, Module 3,
Elective Paper 9.3, Page 194 (2020)
24 The Patents Act, 1970, § 48 (a)
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2.3 ARTICLE 28 OF THE TRIPS AGREEMENT:

A registered Patent should confer the following exclusive Rights on its owner:
1. where the Patent’s subject matter is a product, to prevent any third parties, which is
also not having the consent of the owner, from the following acts of using, making,
offering for selling, sale, or importing for these purposes such product of the owner;
2. where the Patent’s subject matter is a process, to prevent any third parties, which is also
not having the consent of the owner, from the following acts of using, making, offering
for selling, sale, or importing for these purposes at least the product that is obtained
directly by such a process.
3. The owner of the Patent should also have the right to transfer by succession or assign
the Patent and to conclude the licensing contracts.25
2.4 RELIEFS FOR INFRINGEMENT OF PATENTS
29. Section 108 (1) of The Patents Act, 1970 provides for the remedies to the plaintiff in
case his patent rights have been infringed. In any suit for infringement, the court may
grant reliefs such as injunction and at the option of plaintiff, either damages or an
account of profits. Further, Section 108 (2) of the Act provides that in an
infringement suit, infringing goods, materials, and equipment used for their production
can be seized, forfeited, or destroyed.
30. In Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries 26, the Supreme
Court of India has laid down following guidelines to determine infringement of a
patent:
25 Article 28, TRIPS Agreement

26 (1972) 2 SCC 511
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(1) Read the description and then the claims;

(2) Find out what is the prior art;
(3) What is the improvement over the prior art;
(4) List the broad features of the improvement;
(5) Compare the said broad features with the defendant’s process or apparatus; and
(6) If the defendant’s process or apparatus is either identical or comes within the scope of
the plaintiff’s process or apparatus, there is an infringement.
2.5 DOCTRINE OF EQUIVALENCE
31. 'Doctrine of Equivalents' propounds that despite an absence of literal infringement

of a patent claim, infringement can be proven if an element of the accused product or
service and a claimed element of patented invention are found to be substantially
equivalent.27 It is also known as nonliteral infringement. The infringement is known
as doctrine of equivalence when the component or device has same function to
obtain similar or same results.
32. The Doctrine of Equivalent Patents was evolved in the US Supreme Court in the
case Winans v. Denmead 28. The Supreme Court in this case had found patents to be
valueless if they can be exploited by simply changing the form of the invention
being claimed; and had ruled that infringement can occur even if the literal language
of the claims is avoided. The application of the doctrine was clarified in the case
Sage Products Inc. v. Devon Industries Inc. 29 .
27 FMC Corporation & Ors. vs Natco Pharma Limited, CS (COMM) 349/2022

28 56 U.S. 330 (1853)
29 126 F.3d 1420 (Fed. Cir. 1997)
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33. The doctrine was adopted into the Indian legal system during a recent Indian case of
Ravi Kamal Bali v. Kala Tech 30. In said case, it was alleged that the defendants
infringed a patent on a tamper proof lock/seal for containers. The defense was that
the product differed in material particulars from the patented product, but the court
found the changes to be inconsequential and thereby, applied the doctrine. The
Court decided in favor of the Plaintiff and applied the Doctrine of Equivalents. The
Court held that the two products in comparison had the same purpose, made of the
same material and similar functions and stated that merely a different construction
and build of a product does not imply a new invention.
34. In the case of Raj Prakash v. Mangat Ram Chowdhry31, the Delhi High Court had
discussed the concept of non-literal infringement. While the court had not used the
words ‘Doctrine of Equivalence’ explicitly, it had found that the pith and substance
of the invention must be paid heed to and that the decision shall not get lost in
detailed specifications. The Delhi High Court in the case had heavily relied on the
Australian case Beecham Group Limited v. Bristol Laboratories Private Limited 32.
In this case, it was held that infringement would indeed occur if the substance of the
patented article is copied; even when there is no literal infringement. The court had
also stressed on the fact that someone should not exploit a patented product or
process, just by making an insignificant variation in it.
35. In Bajaj Auto Limited v. TVS Motor Company Limited Jt 33

the Madras HC
ultimately held that plaintiff has the patent on the DTSI technology and has been
using it for five years. The HC used the doctrine of equivalence and stated that, “it is
also clear as per the decisions, for the purpose of deciding the novel features to
constitute “pith and marrow” a purposive construction has to be given in order to
30 (2008) 38 PTC 435 (Bom.)

31 ILR (1977) 2 Del 412
32 (1968) 118 CLR 618
33 2009 (12) SC 103
Page 25 of 34
34
make it essential requirement of the invention that any variant would follow outside
the monopoly even if it could not have material effect upon the working of
invention”
36. The device introduced by the Palpatine GE i.e. Darksaber was also used to purify air
over large areas including open spaces. Thus, it substantially performs the same
function as Lightsaber in substantially the same manner to substantially yield the
same result. If the allegedly infringing device performs substantially the same
function in substantially the same way to achieve the same result, then it shall
constitute patent infringement under the doctrine of equivalents.
37. In case of Lallubhai Chakubhai Jariwala v. Chimanlal Chunnilal And Co. 34 the
Court held that a patent may be infringed in several ways, one of which being the
use off “the invention or any colorable imitation thereof in the manufacture of
articles or by getting the invention in practice in other ways”.
38. Therefore, it is humbly submitted before the Hon’ble Court that the device
introduced by Palpatine GE i.e. Darksaber is an imitation of the device invented by
the plaintiff Jedi Corporation i.e. Lightsaber as such infringing the patent No. TA-
22101996 of the plaintiff.
ISSUE 3: YES, DEFENDANT NO. 3 DR. ANAKIN SKYWALKER IS LIABLE FOR

SHARING CONFIDENTIAL INFORMATION, TECHNICAL KNOW-
HOW, TRADE SECRETS AND UNFAIR COMPETITION
3.1 CONFIDENTIAL INFORMATION
34 AIR 1936 Bombay 99

Page 26 of 34
34
39. According to Section 2(3) of The National Innovation Act, 2008, “Confidential
Information” means information, including a formula, pattern, compilation,
program device, method, technique, or process, that:
(a) is secret in that it is not, as a body or in the precise configuration and assembly of its
components, generally known among or readily accessible to persons within the circles
that normally deal with the kind of information in question;
(b) has commercial value because it is secret; and
(c) has been subject to reasonable steps under the circumstances by the person lawfully in
control of the information, to keep it secret.
40. "Proprietary Information" is all information and any idea whatever form, tangible
or intangible, pertaining in any manner to the business of the Company, or any of its
Affiliates, or its employees, clients, consultants, or business associates, which was
produced by any employee or consultant of the Company in the course of his or her
employment or consulting relationship or otherwise produced or acquired by or on
behalf of the Company35.
41. In John Richard Brady v. Chemical Process Equipment Pvt. Limited (“Brady
Case”)36 the principles of confidentiality was for the first time discussed by the Delhi
High Court following the Saltman Engineering Case36 and held that “the law on this
subject does not depend on any implied contract. It depends on the broad principles of
equity that who has received information in confidence shall not take unfair advantage
of it”.
35 M/S Stellar Information Technology Pvt Ltd v. Mr. Rakesh Kumar & Ors, 2016 SCC OnLine Del 4812 36
(AIR 1987 Delhi 372)
36 Saltman Engineering Co. v. Campbell Engineering Co. Limited, (1948) 65 RPC 203.
Page 27 of 34
34
42- In Suhner v. Transradio Ltd. 37 Plowman J. confirmed that confidential nature of a

document does not depend upon weather the information which it contains useful
information compiled by the plaintiff of a particular purpose, and, if it does, has been
handed over to the defendant for a particular purpose. If these criteria are met, the
document is confidential and the defendant is not entitled to use it for any other
purpose.
.3.2 TRADE SECRETS
43. The TRIPS Agreement under Article 39 protects trade secrets in the form of
“undisclosed information”, and provides a uniform mechanism for the international
protection of trade secrets. Such information must be a secret, i.e. not generally known
or readily accessible to person within the circles that normally deal with all kinds of
information in question. Also, the information must have commercial value because it
is secret and the information must be subject to reasonable steps by its owners to keep
it secret.38
44. In American Express Bank Ltd. v. Ms. Priya Puri 39, the Delhi High Court defined
trade secrets as “… formulae, technical know-how or a peculiar mode or method of
business adopted by an employer which is unknown to others.”
45. In Burlington Home Shopping Pvt Ltd v. Rajnish Chibber and another 40
the court
held that a trade secret a information that would cause real or significant harm to the
owner if disclosed to a competitor. It can include formulae not only for the
37 (1967) RPC 329

38 Article 39 TRIPS Agreement
39 (2006)III LLJ 540(Del)
40 61 (1995) DLT 6
Page 28 of 34
34
manufacture of products but also, in an appropriate case, the names of the customers
and the goods which they buy.
3.3 SPRING BOARD DOCTRINE

46. The Spring Board Doctrine was established to safeguard trade secrets. This theory
essentially serves as a safeguard provided to business employers, which they can use
to protect their trade secrets. An injunction that is explicitly intended to eliminate or
restrict the advantage that an employee has obtained by any illegal behaviour,
generally through the misuse of the employer's confidential information, is known as a
"Spring Board doctrine."
47. The Spring Board doctrine derives its name from a a phrase used by Roxburgh J.in
Terrapin v. Builders Supply Company41 wherein he stated that “a person, who
obtained information in confidence, is not allowed to use it as a “springboard” for
activities detrimental to the persons who made the confidential communication, and a
spring-board it remains even when all the features have been published or can be
ascertained by actual inspection by any member of the public .”
48. It was observed in the landmark case of Faccenda Chicken Ltd. v. Fowler42 that
information is graded into three tiers- the first includes information that is already in
the public domain and can be used by the employees post service; the second includes
confidential information cannot be used or disclosed by the employee during his
employment without breaching his duty of fidelity he owes to his employer. However,
this information can be used post service in the absence of an express nondisclosure
agreement. The third tier comprises trade secrets which cannot be disclosed or used by
41 (1967) RPC 375
42 (1986) IRLR 69, CA
Page 29 of 34
34
the employee during or after his employment, even in the absence of an express non-
disclosure agreement.
49. In the case of Inphase Power Technologies v. Abb India Limited,43 it was held that an
ex-employee may be injuncted from using any information in his possession which is
likely to cause harm to the interest of the employer, according to the Springboard
Doctrine. The Court also held that a company which has invested its time, money and
manpower in research and development should be assured protection against any
infringement and misuse of it.
50. In John Richard Brady And Others V. Chemical Process Equipments Pvt. Ltd and
& Another 44
the Delhi High Court in the case involving unauthorized use of trade
secrets observed that it would be a interest of justice to restrain the defendants from
abusing the know-how, specification , technical information regarding the plaintiffs
machine “which was entrusted to them under express condition of strict
confidentiality, which they have apparently used as a 'spring-board' to jump into the
business field to the detriment of the plaintiffs.”
51. The Delhi High Court in the case of Raj Prakash v. Mangat Ram Chowdhary45 had
held that a person would be guilty of infringement if he makes what is in substance the
equivalent of the patented article, and trifling or unessential variation was to be
ignored in this determination.
3.4 UNFAIR COMPETITION
43 Inphase Power Technologies v. ABB India Limited, Miscellaneous First Appeal No.3009/2016 in M.F.A
No.3009/2016 (Karnataka High Court).
44 (AIR 1987 Delhi 372)
45 ILR (1977) 2 Del 412
Page 30 of 34
34
52. The WIPO Model Provisions on Protection Against Unfair Competition 46 defines
the “failure to correct or supplement information concerning a product test published
in a consumer magazine, thereby giving a wrong impression of the quality of the
product offered on the market, or failure to give sufficient information concerning the
correct operation of a product or concerning possible side-effects of a product,” as an
act of “unfair competition”.
53. Provisions of the Paris Convention (1967) define “unfair competition” as “Any act
of competition contrary to the honest practices in industrial and competition
matters.”47
54. In Escorts case,48 the Delhi High Court restrained from manufacturing, selling or
offering for sale of the Pick-N-Carry Mobile Cranes that are substantial imitation or
reproduction of the industrial drawings of the Plaintiffs or from using in any other
manner whatsoever, the technical know-how.
3.5 NON-DISCLOSURE AGREEMENT (NDA)
55. A ‘Non-Disclosure Agreement (NDA)’ or ‘Confidentiality Agreement (CA)’ is an

agreement between two or more parties whereby one party agrees not to disclose or
use information it receives from the other party.
56. Usually such agreement precedes any other commercial agreement between two
business entities entering into business for the first time as both are suspicious about
46 Article 1.04 WIPO Model Provisions on Protection Against Unfair Competition

47 Article 10 (2) of the Paris Convention, 1967
48 Escorts Const. Equipment Ltd. V. Action Const. Equipment P. Ltd. S. No. 533/98 Decided on 16.10.1998
MANU/DE/0185/1999
Page 31 of 34
34
each other as they are not aware of business ethics of each other. Such agreements are
signed first before signing of any commercial agreement of substance involving
critical business relation- be it for ‘development of dies or moulds’ or ‘for sharing
commercial designs’ or for development of design of products or ‘for mass production
on contract basis’ or assignment of patents / trademarks / other trade secrets under
franchise agreements’ or ‘acquisition of any business’ or ‘technology transfer
agreements’. The confidentiality clause is essential clause in almost every agreement
signed by business entity with other stakeholders (including employees, vendors,
distribution channels, professionals and others). 49
57. NDA is a legally enforceable contract that preserves confidentiality between the
contractual parties. By signing NDA, the parties agree and acknowledge to protect
confidential information disclosed by any party to the other and undertaking not to
disclose, publish, distribute, divulge, release, copy, modify and/or use such
information without (written) consent of the disclosing party.
58. In Schwans Home Serv., Inc.,51, the NDA stipulated that as a condition of
employment: “Employee shall neither directly nor indirectly (i) disclose to any person
not in the employ of Employer any Confidential or Proprietary Information, or (ii) use
any such information to the Employee’s benefit, the benefit of any third party, or to
the detriment of Employer ”
59. The Defendant no. 3 Dr. Anakin Skywalker scientist of Tatooine nationality worked in
Jedi Corporation’s Research & Development unit in Coruscant. A standard
employment agreement was entered between Dr. Skywalker and Jedi corporation at
the inception of his employment which contained a nondisclosure clause .The team
led by Dr. Anakin at Jedi Corporation discovered the Beta Crystalline form of Kyber
49 The Institute Of Company Secretaries Of India, Intellectual Property Rights- Laws And Practices, Module
3, Elective Paper 9.3, Page 396 (2020) 51 364 N.L.R.B. No. 20/2016
Page 32 of 34
34
crystal which they used to invent an Air Filteration Device called ‘Lightsaber’ which
was used to purify air over large open areas. Later on he left his employment at
Coruscant and joined R & D unit of Palpatine galactic empire at Tatooine. He started
working on air purifying device i.e. Darksaber which substantially performs similar
function as Lightsaber and substantially yields the same result as Lightsaber and
thereby Dr. Anakin breech the non –disclosure clause which he conducted with Jedi
corporation. Thus,
60. Therefore, it is humbly submitted before the Hon’ble Court that the Defendant No. 3
Dr. Anakin Skywalker is liable for sharing confidential information, technical
knowhow, trade secrets and unfair competition.
Page 33 of 34
34
PRAYER
Page 34 of 34

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10TH MAHAMANA MALAVIYA NATIONAL MOOT COURT COMPETITION 2023 TC-34

TEAM CODE- TC-34

IN THE HON’BLE HIGH COURT OF KASHI

------------------ No. ---------------OF 2023

IN THE MATTER OF:

JEDI CORPORATION ………… (PLAINTIFF)

1- GOVERNMENT OF TATOOINE ………… (DEFENDANT NO. 1)

2- PALPATINE GALACTIC EMPIRES ………… (DEFENDANT NO. 2)

3- DR. ANAKIN SKYWALKER ………… (DEFENDANT NO. 3)

MOST RESPECTFULLY SUBMITTED,

TABLE OF CONTENTS …………………………………………………………………

INDEX OF AUTHORITIES ……………………………………………………………

STATEMENT OF FACTS ……………………………………………………………..

SUMMARY OF ARGUMENTS ………………………………………………………

ARGUMENTS ADVANCED …………………………………………………………

I: YES, THE PATENT GRANTED TO THE PLAINTIFF IS VALID

1.1 DEFINITION OF IPR 1.2

1.3 WHAT IS INVENTION?

1.4- ELEMENTS OF PATENTABILITY

1.4.2. INVENTIVE STEP OR (NON-OBVIOUSNESS)

1.4.3. INDUSTRIAL APPLICABILITY (UTILITY)

1.5 SCOPE OF PATENTABILITY

1.5.1 NON-APPLICABILITY OF SECTION 3 (d) OF THE PATENTS ACT, 1970

2.1 WHAT IS INFRINGEMENT OF PATENT?

2.2 RIGHTS OF PATENTEE

2.3 ARTICLE 28 OF THE TRIPS AGREEMENT

2.4 RELIEFS FOR INFRINGEMENT OF PATENTS

2.5 DOCTRINE OF EQUIVALENCE

III: YES, DEFENDANT NO. 3 DR. ANAKIN SKYWALKER IS LIABLE FOR

3.1 CONFIDENTIAL INFORMATION

3.2 TRADE SECRET

3.3 SPRING BOARD DOCTRINE

3.4 UNFAIR COMPETITION

3.5 NON DISCLOSURE AGREEMENT (NDA )

• Ravi Kamal Bali v. Kala Tech, (2008) 38 PTC 435 (Bom. )

• Raj Prakash v. Mangat Ram Chowdhry, ILR (1977) 2 Del 412

• Lallubhai Chakubhai Jariwala v. Chimanlal Chunnilal And Co., AIR 1936

• Inphase Power Technologies v. Abb India Limited, Miscellaneous First Appeal

No.3009/2016 in M.F.A No.3009/2016 (Karnataka High Court)

• Escorts Const. Equipment Ltd. V. Action Const. Equipment P. Ltd. S. No.

533/98 Decided on 16.10.1998 MANU/DE/ 0185/1999

• FMC Corporation & Ors. vs Natco Pharma Limited, CS (COMM) 349/2022

• Genetech Patent case (1987) R.P.C. 553

• Morgan v. Seaward, 1 WPC 167

• Otto v. Linford, 46 L.T. (N.S.) 35

• Winans v. Denmead, 56 U.S. 330 (1853)

• John Richard Brady v. Chemical Process Equipment Pvt. Limited (“Brady

Case”) (AIR 1987 Delhi 372)

• Faccenda Chicken Ltd. v. Fowler, (1986) IRLR 69, CA

• THE PATENTS ACT, 1970

• THE PATENTS RULES, 2003

• THE NATIONAL INNOVATION ACT, 2008

• THE PATENT AMENDMENT ACT, 2005

• CODE OF CIVIL PROCEDURE, 1908

• INTELLECTUAL PROPERTY RIGHTS – LAWS AMD PRACTICES, THE

INSTITUTE OF COMPANY SECRETARIES OF INDIA (ICSI)

• RAMA SARMA: A COMMENTARY ON INTELLECTUAL PROPERTY

• BY DR. MADHU SUDAN DASH, TEST OF NOVELTY UNDER INDIAN

PATENT LAW: A CRITICAL ANALYSIS, VOLUME-4 GJRA (2015)

• BY DR. PRATIVA PANDA, INFRINGMENT OF PATENT RIGHTS IN INDIA

VOLUME 5, PARIPEX IJR (2016)

• THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL