Q.

intrim injunction:

Another factor which worked against the grant of interim injunction was the non- working/non user
of patent. In Franz Xaver Huemer Vs. New Yash Engineers [AIR 1997 Delhi 79] Division Bench (DB) of
High Court of Delhi (DHC) confirmed Trial court’s Order vacating interim injunction inter alia on the
ground of nonuser/ non-working. In Glaverbel S.A. Vs. Dave Rose & Ors [2010 (43) PTC 630 (Del)]
Single Judge (SJ) followed the decision in Franz Xaver Huemer (supra) and ruled that "The test which
has to be applied is whether there is an actual commercial working/ exploitation of Invention in
India.." The court ruled that "no cogent evidence for commercial working is placed on record except
the averments in various pleadings." Based on the facts of non-working by plaintiff Ad-interim
injunction was denied. Similarly, in Sandeep Jaidka Vs. Mukesh Mittal & Anr. [(2014) 59 PTC 234
(Del)] SJ of Delhi high court followed the decision in Franz Xaver Huemer (supra). And ruled that "It is
now well settled that if patent has not been sufficiently exploited in India and there is no user of the
said patent in commercially viable form in India, the court may tilt the discretion in the interim stage
in favor of the defendant and Interim injunction was denied."

In Novartis Ag And Anr. vs Mehar Pharma And Anr. on 23 December, 2004 [2005 (3) BomCR 191],
[2005 (30) PTC 160] Single Judge noted that the plaintiffs do not manufacture the drug in India and
they said they would meet the requirement of this drug by import. Expressing concern if interim
injunction is granted in favour of the plaintiffs, the manufacturing and marketing network of the
defendants so far as the drug is concerned would be dismantled. The Court further stated that if due
to any problem, the plaintiffs cannot make available the drug in required quantity in India it
obviously will be disastrous for the patients. Court in this case ruled that "This consequence is
foreseeable, therefore in my opinion, the Court should not pass any interim order which may
possibly lead to such a situation."

In present case jedi is does not have any commercial utilization of its patent in Tatooni i.e jedi’s
patent is non-working and in light of above cases it should be granted interim injunctions.

Furthermore ,in F. Hoffmann-La Roche Ltd. And Anr. vs Cipla Limited on 19 March, 2008 [48 (2008)
DLT 598, MIPR 2008 (2) 35] , Delhi High Court refused to grant interim injunction in public interest.

It is humbly pleaded that Darksaber is essential for public interest as the air quality index of all parts
of Tatoonie hover above severe category for most part of the year and there is no alternate device
currently in Tatoonie which could purify air of large areas including open space.

Novartis AG v Mehar Pharma[4] As long as the defendant issues a counter-claim for invalidity, it is
impossible for the patentee to create a prima facie argument in which the court does not award the
defendant any injunction.

Q. Dr skywalker:

Know-how

Technical know-how is information that is confidential “but which once learned necessarily remains
in the servant’s head and becomes part of his own skill and knowledge applied in the course of his
master’s business”. In this regard, while employers are entitled to protect their bona fide
confidential information from being used by former employees to their detriment, this interest must
be balanced against the:
"… prima facie right of any person to use and to exploit for the purpose of earning his living all the
skill, experience and knowledge which he has at his disposal, including skill, experience and
knowledge which he has acquired in the course of previous periods of employment."

UNFAIR COMPETITION

An ex employee can not be sued for unfair competition if there is no “non-compete” clause in the
employment agreement of the employer.

Fiduciary duties to act in their employer’s best interests and not in their own interests at the
expense of their employer, which include a duty not to misuse their employer’s confidential
information

In the case, Superintendence Company of India Ltd vs. K. Murgai,[5] it was held that an employee
can not be restrained from joining the competitor but he can be restricted from the disclosing of the
trade secrets of the former employer. In this case the employee agreed that he will not engage
himself in any of the competitors during the employment and post employment. But the employee
joined the other competitor after the termination from the first employment. Supreme Court held
that the employee can not be restrained to join the competitor but court held that the clause to
maintain the secrecy or not to disclose the trade secrets is enforceable.

In present case the defendant has leaked any confidential information which could / can cause unfair
competition and it is mere presumption of the plaintiff.If the court grants the restrains against the
defendant for these ground less claims it would not be in line with the general path of law laid down
in the Superintendence Company of India Ltd vs. K. Murgai.

TRADE SECRETS AND CONFIDENTIAL INFORMATION

Lord Goff of Chieveley in Attorney General v. Guardian Newspaper Ltd. (No. 2)[33], who had
observed: “a duty of confidence arises when confidential information comes to the knowledge of a
person…..in circumstances where he has notice, or is held to have agreed, that the information is
confidential, with the effect that it would be just in all the circumstances that he should be
precluded from disclosing the information to others”. He was further of the opinion that confidential
information is not something which is available in the public domain or is in the knowledge of the
public. The term confidentiality propagates inaccessibility, and therefore irrespective of the mode in
which the confidentiality is retrieved by the receiver, he shall be held in breach.

confidential shall have three elements, first, the nature of the information shall be confidential,
second, the circumstances under which the information is shared must impose an obligation of
confidentiality and, third, an authorised use of such information shall be there[34].

In Star India Pvt. Ltd. Vs. Laxmiraj Seetharam Nayak 2003 SCC OnLine Bom 27 it was held that
everyone in any employment for some period would know certain facts and would get to know
some information without any special effort; all such persons cannot be said to know trade secrets
or confidential information and that every opinion or general knowledge of facts cannot be labelled
as trade secrets or confidential information. It was yet further held that if such items are called as
trade secrets, or secret, would lose its meaning and significance. It was held that the basic nature of
the business dealings of the plaintiff in that case with its advertisers would be openly known and
cannot be called a trade secret or a confidential information; the rates of the advertisements are
within the public domain and every businessman generally knows the rates of his rivals; the
concerned people know the rates of the advertisements; unless they are told the rates and other
conditions of the advertisements, no business transaction can be done; such matters are not even
open secrets. Similarly it was held that fixation of rates etc. depends on a number of factors
including the popularity, in that case of T.V. serial and the time-slots of the display of such T.V.
serials and mere use of the words „strategies‟, „policy decisions‟ or „crucial policies‟ repeatedly in
all the items does not acquire the position or character of secrecy. It was held that there was nothing
on record from which it could be inferred that the defendant had come to know any trade secrets or
confidential information concerning the plaintiff company and its business especially when the trade
secrets and the confidential information were not even spelled out.

Similar to this case Dr. Skywalker did not disclosed any trade secret of Jedi Co. but only used his past
experiences and skills which he acquired during his previous employment with the general
knowledge available in the public domain regarding kyber crystals to make Darksaber.

Star India Private Limited supra it was held that a salesman leaving a company and heart surgeon
leaving a hospital cannot be prevented from negotiating with the customers or performing a surgery
on the premise that they acquired the skill by experience and those skills can be carried with the
employee. It was yet further held that though the defendant in that case, on amassing information
and knowledge with regard to the plaintiff‟s plan of operation, could not be injuncted from
disclosing those plans to the competitor if he carried them in his head and the competitor in the
market, could not be taken to be driven by the defendant‟s disclosure alone.

In light of above stated facts Dr. Skywalker had not disclosed any trade secret , technical know-how
and confidential information but had only used his skills and knowledge to make Darksaber. This can
be seen in the fact that Lightsaber and Darksaber are completely two different devices. The
defendant has not misused nor would misuse his position to cause any loss to the plaintiff. In the
present case, nothing has been indicated even as to what trade secrets or technical know-how was
revealed to the defendant which should not be divulged to others. In a business house, the
employees discharging their duties come across so many matters, but all these matters are not trade
secrets or confidential matters or formulae, the divulgence of which may be injurious to the
employer. If the defendant on account of his employment with the plaintiff has learnt some business
acumen or ways of healing with the customers or clients, the same do not constitute trade secrets or
confidential informations, the divulgence or use of which should be prohibited.

A judgment of Delhi High Court in Krishan Murgai v. Superintendence Co. of India states, An
employee, particularly, after the cessation of his relationship with his employer is free to pursue his
own business or seek employment with someone else. However, during the subsistence of his
employment, the employee may be compelled not to get engaged in any other work or not to
divulge the business/trade secrets of his employer to others and, especially, the competitors. In such
a case, a restraint order may be passed against an employee because Section 27 of the Indian
Contract Act does not get attracted to such situation. It is also to be added that a trade secret is
some protected and confidential information which the employee has acquired in the course of his
employment and which should not reach others in the interest of the employer. However, routine
day-to-day affairs of employer which are in the knowledge of many and are commonly known to
others cannot be called trade secrets. A trade secret can be a formulae, technical know-how or a
peculiar mode or method of business adopted by an employer which is unknown to others.

In light of above facts defendant, Dr Skywalker should not be restrained as he had not leaked any
confidential information, technical know-how and trade secret .Furthermore, he has a right and is
free to seek employment with someone else even though it is a competitor of the plaintiff. The
charges filed by the plaintiff are on frivolous grounds as do not prove that the defendant had leaked
any confidential information. It mere presumption of the plaintiff that the defendant has shared any
confidential information as he is on the same post in his present employment as he was in Jedi
Co..By initiation such suits with the presumption and malice intention of plaintiff hampers the
fundamental right of the defendant.

The wider interpretation of Article 21 made by the Hon’ble Supreme Court through its judgement in
Olga Tellis & Ors. v Bombay Municipal Corporation & Ors.- ‘right to work’ was recognised as a
fundamental right inherent in the ‘right to life’.

Article 19 (g) of the Constitution of India clearly provides every citizen the right to practice any
profession, trade or business.

The Universal Declaration of Human Rights and the International Covenant on Economic, Social and
Cultural Rights, both of which were acceded by India, in Article 23 and Article 6 respectively,
recognise the right to work in an employment of one’s choice and the State’s responsibility to
safeguard this right.

Q. Invalid patent:

To be a valid patented device , a device should be an invention [Section 2(j)], novel[section 2(l)],
contain inventive step[section 2(ja)] and should be capable of industrial use[section 2(1)(ac)].

In Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries Delhi High Court said that “To be
patentable an improvement on something known before or a combination of different matters
already known, should be something more than a mere workshop improvement; and must
independently satisfy the test of invention or an 'inventive step'. To be patentable the improvement
or the combination must produce a new result, or a new article or a better or cheaper article than
before. The combination of old known integers may be so combined that by their working inter
relation they produce a new process or improved result. Mere collocation of more than one integers
or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a
patent.”.

In light of above fact to be a valid patent Jedi Co.’s air purification device ‘Lightsaber’ should have
satisfied the test of inventive step and must have produced a new result but it did not as the kyber
crystal used was already known to the general public and person skilled in art and the end result of
the device is also not new as it just purified the air which was a known feature of kyber crystal.

In Mariappan v. A.R.Safiullah where the court said that an “inventive step” which is necessary
ingredient of invention in order to make an Application eligible for grant of patent under the Patent
Act of 1970, must be relating to an invention involving technical advance or having economic
significance or both along with a necessary factor that such invention should make it not obvious to
a person skilled in the art. Therefore, a patent must have characters of novelty, non-obviousness and
enablement, out of which, enablement being the concept of putting the novelty into action and all
the above said ingredients must consecutively be present to have a valid patent.

In present case air purification device allegedly invented my Jedi Co. does not contain any inventive
step which is a necessary ingredient of invention as Lightsaber which is completely based on Kyber
crystal and force is already known/ obvious to the person skilled in the art .Also the device made is
not novel as it just a combination of already known elements which produced an already known end
result which makes the patent given to Jedi CO. invalid.

Lightsaber can be invalidated on the ground that the invention lacks inventive steps based on
obviousness. Claimed innovation is clear to any individual gifted in workmanship and doesn’t include
any imaginative advance that can be refuted based on conspicuousness. If an individual who is an
expert in the workmanship, appointed by the court for giving his testimony, believes that the
claimed invention is not something inventive and is very basic in nature, then, at that point, the case
of the patent can be revoked on the grounds of obviousness.

Furthermore, Patent of Lightsaber is invalid as it does not qualify Section 3(d) of Patent act which
states that “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.”

Lightsaber is a device which uses a known process i.e force and negative air ionization and a newly
discovered form of kyber crystal ,but the use of the known apparatus and process does not result in
any new product which makes it an invalid patent as to be a valid patent one should not come under
Section 3 and 4 of Patent Act, 1970.

Q. Miscellaneous point:

Section 4 of the Competition Act, 2002, which prohibits the abuse of dominance by dominant firms.
In Flynn Pharma Ltd. v. Competition and Markets Authority, the Commission recognised the
practical difficulties associated with delineating “excessive pricing”. Factors such as the lack of
substantial evidence on costs, availability of substitutes from competitors and the legitimate
resistance in exceeding its jurisdiction by setting prices of goods/services have hindered competition
authorities from examining and defining “excessive pricing” in depth.

Q. infringement of patent:

An invalid patent claim cannot be infringed