MONSANTO COMPANY BY THEIR PATENT AGENT, DE PENNING AND DE PENNINGversusCORAMANDAL INDAG PRODUCTS (P) LTD.

    120
A
                   MONSAN'l'O COMPANY BY THEIR PATENT AGENT,
                          DE PENNING AND DE PENNING
                                      Vo
                     CORAMANDAL INDAG PRODUCTS (P) LTD,

                              JANUARY 14, 1986
B
          '    [O, CHINNAPPA REDDY AND E,S, VENKATARAMIAH, JJ,]

         ' Patents Act, 1970 - Sections 64(l)(e) and (f) - Patent -
    When Hable to be revoked - Invention being publicly known -
    Requirement of - When satisfied - E111.11Bification - Whether
c   invention        Herbicide Formulations containing active
    ingredient 'Butachlor' - Whether can be enfolded in specifi-
    cation relating to a Patent Product.
           The plaintiff-appellant instituted a suit against the
    respondent on the ground that its inventions entitled
    "Phytotoxic Compositions" and "Grass Selective Herbicide
D   Compositions" duly patented containing the active ingredient
    "Butachlor" was infringed by the defendant-respondent market-
    ing "Delchor-50" ·a formulation of ''Butachlor" which was
    alleged to be covered by the plaintiff's Patent No. 125381, In
    the written statement, the defendant-respondent claimed that
    the patents were liable to be revoked under s.64(l)(a), (b),
E   (d), (e), (f), (g), (h), (!), (j), (k), (1), and (m) of the
    Patents Act, 1970. The suit was decreed by the trial Court,
    but waa dismissed by the appellate court.
           Dismisaing the appeel,

          ll!Ul : l(i) Under s. 6l(l)(d), a patent may be revoked
F   on the ground that the subject of any claim of the complete '
    specification is not an invention within the meaning of the
    Act. ·Under sec. 64(e), a patent may be revoked if the
    invention so far ail claimed in any claim of the complete
    specification ia not new, having regard to what was publicly
    known or publicly used in India before the date of the claim,
G   etc. Under sec. 64(1 )(f), a patent may be revoked if the
    invention so far as claimed in any claim of the complete
    specification is obvious or does not involve any inventive
    step having regard to what was publicly known or publicly used
    in India or what was published in India before the priority ._,.
    date of the claim. [128 G-H; 129 A]
H



              '
              '.
                      MONSANTO CO. v. CORAMANDAL INDAG             121

                                                                          A
,;            l(ii) To satisfy the requirement of being publicly known
       as used in clauses (e) and (f) of sec. 64(1), it is not
       necessary, that it shoul.d be widely used to the knowledge of
       the consumer public. 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     B
       commerce or consumers. [129 D-E]
              2, Butachlor which was the common nsme for CP 53619 was
       discovered, even prior to 1968 as a Herbicide possessing the
...... property of non-toxic effect on rice. The form.ila for the
       Herbicide was published in the report of the Internstionsl
       Rice Research Institute for the year 1968 and its common name
       Butachlor was also mentioned in the report of the Inter-           C
       national Rice Research Institute for the year 1969. No one
       patented the invention Butachlor and it was the property of
       the population of the world. Before Butachlor or for that
       matter any Herbicide could be used for killing weeds, it had
       to be converted into an emulsion by dissolving it in a suit-
       able solvent and by mixing the solution with an emulsifying        D
   < agent. Emulsification is a well-known process and is no one's
       discovery. Neither Butachlor nor the process of Elllllsification
       was capable of being claimed by the plaintiffs as their
       exclusive property. [128 C-E]
              In the instant case, the solvent and the emulsifier were
       admitteiJ.ly not secrets and they were ordinary market products.   E
       From the beginning to the end, there was no secret and there
       was no invention by the plaintiffs. The ingredients, the
       active ingredients the solvent and the elllllsifier, were known;
       the process was known, the product was ~own and the use was
       known. The plaintiffs were merely camouflaging a substance
       whose discovery was known throughout the world and trying to       F
     ' enfold it in their specification relating to Patent Number
       125381. The patent is, therefore, liable to be revoked,
       [129 F-G; 130 A]

             CIVIL APPELLATE JURISDICTION: Civil Appeal No. 1490 of
     1984.
                                                                          G
           From the Judgment and Order dated ·16,2.1984 of the
     Madras High Court in O.S.A. No. 217 of 1982.
           S. Chellaswamy, N.H. Hingorani, Mrs. Kapila Hlngorani,
     Mrs. Rekha Pandey and D. Sadasivan for the Appellants.
           F.S. Nariman, M.K. Rao, P.N, Ramalingam and A.T.M.
     Sampath for the Respondent.
                                                                          H
    122                  SUPREME COURT REPORTS      [19861 1 s.c.R.
A

             The Judgment of the Court was delivered by
             CHINNAPPA REDDY, J. The long and grasping hand of a
                                                                      r.
    Multi National Company, the Monsanto Company of St. Lcius,
    Missouri, United States of America; has reached out to prevent
    alleged infringement of two of their patents (Numbers 104120
B   and 125381) by the defendant, an Indian Private Limited
    Company. Though the suit, as initially laid, was with
    reference to two patents, the suit was ultimately confined to
    one patent only (Number 125381), the period for which the
    other patent ( 104120) was valid having expired during the ;-
    pendency of the suit. The suit was decreed by the trial court,
c   bu.t was dismissed by the appellate court. The appeal which is
    now before us has been filed pursuant to a certificate granted
    by the appellate bench of the High Court on the ground that
    substantial questions of law of great public importance were
    involved. The questions, however, were not specified in the
    certificate. As we see it, we are unable to find any substan-
D    tial questions of law of great importance. We are afraid both
     the .lower courts misdirected themselves and missed the real
     substance of the dispute and found themselves chasing the )
     mirage of legal questions which did not strictly arise.
          ', We may first refer to a few preliminary facts. Weeds, as
     is well-known, are a menace to food crops, particularly crops
E    like' rice which belong to the grass-variety. Research has been
     going on for years to discover a weed killer which has no
     toxic effect on rice, that is to say, a Herbicide which will
     destroy the weeds but allow rice to survive without any
     deleterious effect. For long the research was futile. But in
      1966-67 came a break through. A Scientist Dr. John Olin
F    discovered CP53619 with the fornllla '2-chlore-2' ,6'-Diethyl-
     N-(Butoxy-Methyl)- Acetanilide' which satisfied the require-
     ment of a weed killer which had no toxic effect on rice. The t
     annual report of the International Rice Research Institute for
      1968 state, ''Weed control in rice was an important part of the
     Agronomy program. The first agronomic evidence of the efficacy
G   of granular - trichloroethyl styrene for the selective control
    of annual grasses in transplanted rice was obtained at the
     Institute. Another new accession, CP53619, gave excellent weed
     control in transplanted flooded and non-flooded, upland rice."
     It was       further stated "CP53619 at 2 and 4 k.g./ha a.i.
     appeard at least twice among the 20 best treatments" and "the
H    most outstanding new pre-emergence herbicide was 2-chloro-2', -If
     6' -diethyl-N- (butoxymethyl )-acetanilide  (CP 53619)." The
        MONSANTO CO. v. CORAMANDAL INDAG [CHINNAPPA REDDY, J.]       123.

           annual report of the International Rice Research Institute for
      ,, 1969 shows that the herbicide CP 53619 came to acquire the         A
          name of Butachlor.
                 It is now necessary to refer in some detail to the
          averments in the plaint, as the decision of the case, in the
          view that we are taking, turns very IDlCh on What the
          plaintiffs themselves had to say about their case. The first
          plaintiff is the Monsanto Company and the second plaintiff is     B
          a subsidiary of the first plaintiff registered as a Company in
          India. It was stated in the plaint that the first plaintiff
     - was the patentee of inventions entitled "PHYTOTOXIC
          COMPOSITIONS" and "GRASS SELECTIVE HERBICIDE COMPOSITIONS",
          duly patented under patent number 104120 dated March 1, 1966
          and 125381 dated February 20, 1970. The claims and the parti-
          culars relating to the inventions were stated to be contained     c
          in the specifications of the two patents annexed to the plaint
          as annexure I and II. After stating so much the plaintiffs
          said, and this is very important, "THE ACTIVE INGREDIENT
          MENTIONED IN THE CLAIM IS CALLED "BUTACHLOR". It suggested,
          without expressly saying it that the Plaintiffs' patents
      •. covered Butachlor also which in fact it did not, as we shall       D
          presently see. It was next stated that the first plaintiff had
          permitted the second plaintiff to work the patents from 1971
          onwards under an agreement dated September 3, 1980. The second
_,        plaintiff had been manufacturing and marketing formulations
          accordng to the Patents Numbers 104120 and 125381 and 'a
          specimen tin containing forlDllations produced by the second      E
          plaintiff according to the said two patents and sold in the
          market by the second plaintiff' was produced along with the
          plaint as M.O.I. It came to the notice of the plaintiffs, it
          was averred, that the defendant was attempting to market a
        . formulation of Butachlor covered by the said patents. They,
       ~
         ·therefore, wrote to the defendant drawing their attention to          F
        the existence of the patents in thelr favour. Some corres-
       pondence ensued. In the second week of May, 1981, the second
       plaintiff found that the defendant was marketing formulation
       of Butachlor covered by the patents of the first plaintiff.
       Sample tins of "Butachlor- 50" manufactured by the defendant
       were purchased by the plaintiffs and were produced along with            G
       the plaint as M.O.s 3 and 4. The legend on the tins was as
       follows :
             "Delchor-50            Composition
             (Butachlor 50%E.C.)    Butachlor 50% W/W
             Herbicide              Solvents and Emulsifiers
                                    50% W/W"                                    H
    124                  SUPREME COURT REPORTS      [19861 1 s.c.R.
A
    According to the plaintiffs, the legend on the tins containing I--
    the substance manufactured by the defendants showed that what
    was sold by the defendants was nothing but a reproduction of
    the first plaintiff's patented formulations. The fornulations
    of the defendant were sent to Shri Ram Institute for analysis
    and they were said to contain the chemical "Butachlor Chemical
B   formula for which is 2 Chloro 2' 6' -Diethyl - N -
    (Butoxymethy() Acatanilide." On these averments,            the
    plaintiffs alleged that the defendant had infringed their
    Patents Numbers 104120 and 125381 by selling formulations r
    covered by them. The plaintiffs sued for an injunction to
    restrain the defendant from infringing their Patents Numbers
c   104120 and 125371 by the manufacture or sale of the infringing
    fornulations as contained in this marked as M.O.Nos. 2 and 3.
    The· Plaintiffs also asked for an account etc. Annexed to the
    plaint were the two speci.fications relating to Patent Numbers
    104120 and 125381. In the specification relating to
    "Phytotoxic Composition" (Specification No. 104120), it was
D   claimed :
                "We Claim :
                1. A phytotoxic composition comprising as an active
                ingredient a compound of the fornula shown in
                Figure 1 of the accompanying drawings, wherein RI
                and R2 are alkyl of alkoxy having from 1 to 10
E               carbon atoms, R3 is halogen, alkyl or alkoxy having
                from 1 to 10 carbon atoms, n is an integer from 0
                to 3, A is oxygen or sulfur, X is chlorine, bromine
                or iodine, and Z,Zl and Z2 are hydrogen, alkyl,
                alkoxy,alkenyl or alkynyl having from 1 to 18
                carbon atoms, aryl having from 6 to 24 carbon
F               auoms, heterocyclyl having a miximum of 24 carbon,
                atoms and from 1 to 3 hetero atoms, or two of Z
                groups are combined to form a bivalent alkylene
                radical having from 1 to 6 carbon atoms in
                 admixture with an adjuvant such as herein
                described, the active ingredient in the said compo-
G                sition being present in an amount of at least 0,1
                per cent by weight.

                2. A phytotoxic composition as claimed in Claim 1,
                wherein the active ingredient is 2' -tertbuty 1-2-
                chloro-N- (2-prophynyloxy-methyl)-6'methyl-        ~
H               acetanilide.
MONSANTO CO. v. CORAMANDAL INDAG [CHINNAPPA REDDY, J.]      125

                                                                  A
          3.• A phytotexic composition· as claimed in Claim l,
          wherein the active ingredient is 2' -tertbutyl-2-
          chlore-N-(2-prophynyloxy-methyl )-6 '--methyl-acetani-
          lide.                              '
          4. A phytotexic composition as claimed in Claim I,
          wherein the active ingredient is 2' -tertbutyl-2- B
          chlore-N(allyloxymethyl)-6'methylacet-anilide.
          5. A phytotoxic composition as claimed in Claim I,
          wherein the ·active ingredient is 2-tertbutyl-2-
          brome- N-methexy-methyl-6'--methylacetanilide.
          6. A phytotoxic composition as claimed in Claim l,
          wherein the active ingredient is 2'-tertbutyl-2-
          broome-N-(2-prophynylexyraethy 1)-6- methylacetani- C
          lide•   ·                        ·

          7. A phytotoxic composition as• claimed in Claim 1,
          wherein the· active ingredient is 2-chloro-2', 6-
          disthyl-N-(methoxymethyl) acetanilide.
                                                                  D
          8. A phytotoxic composition as claimed in Claim 1
          wherein the active ingredient is 2'-tertbutyl-2-
          bromo-N-(allyloxymethyl)-6'--methylacetanilide.

          9. A phytotoxic composition as claimed in Claim I,
          wherein the active ingredient is 2'-tertbutyl-2- E
          choloro-N- (2-methoxyethoxymethyl)-6'-methylacetan~
          ilide.

          JO, A phytotoxic composition as claimed in Claim I,
          wherein the active ingredient is 2 '-tertbutyl -2-
          bromo-N- (2-methoxyethoxymethyl) -6- methylace- F
          tanilide.

          II. A phytotoxic composition as claimed in Claim
          I, wherein the active ingredient is 2-bromoe-2·'-
          terbutyl-N-(2,3        dihydroxypropoxyomethyl)-6~
          methylacetanilide.                                  G
          12. A phytotoxic composition as claimed in Claim I,
          wherein   the   active   ingredient is   2-chloro-2',
          6-dimethyl-N-(isoproposymethyl)-acetanilide.
          }3. A phytotoxic composition substantially as here-
          in ·before described."
                                                                  H
    126                    SUPRy:ME COURT REPORTS   [1986] 1 s.c.R.
A

    In the specification relating to Grass selective Herbicide "
    Compositions (Specification No. 125381), it was claimed:

              "We claim:

B              1. !>- herbicidal composition in the fora of an
               eDJllsion, suspension or dispersion, comprising as
               active ingredient a compound selected from the
               group.

               a) 2' ,6' -diethyl-N-butoxymethyl-alpha-chloroaceta-
c              nilide, and

               b) 2', 6'-diethyl-N-(2-butoxyethyl)-alpha-chloro-
               acetanilide, or a mixture of (a) and       (b) in
               admixture with one or more diluents or carriers and
               surface active agents in which an emulsion is
D              obtained by dissolving the active ingredient in an
               organic solvent and thereafter dispereing the ,
               solution in another liquid medium in the presence
               of an emulsifying agent such as herein described.
               2. A composition as claimed in claim 1, which
               further comprises one or more compounds selected
E              from the following -

               conventional pesticides, fertilizers, and extenders
               such as herein described.
               3. A composition as claimed in claim 2, wherein
               mineral extenders such as natural clays, phyro-
F              phyllites and vermiculite having a perticle size
               of 2000 to 149 microns, preferably of 1410 to 250;
               microns, are used.
               4. A herbicidal composition in the fora of an
               emulsion, suspension or dispersion substantially as
               hereinbefore described."
G
         We do not propose to set out in detail the contents of
    the written statement. It is sufficient to state that the
    Defendant claimed as he was entitled to do under s. 107 of the
    Patents Act 1970, that the patents were liable to be revoked
    under s. 64(1) (a),(b),(d),(e),(f),(g),(h),(i),(j),(k),(l) and .t-
H   (m) of the Patents Act. The defendant also made counter claim
    seeking revocation of the patents.
   MONSANTO CO. v. CORAMANDAL INDAG [CHINNAPPA REDDY, J.]     127
                                                                     A
        A     close scrutiny of the plaint and a reference to the
• evidence of the witnesses for the plaintiff atonce exposes the
    hollowness of the suit. We must begin with the statement in
    the plaint that "THE ACTIVE INGREDIENT MENTIONED IN THE CLAIM
    IS CALLED 'BUTACHLOR "' which suggests that Butachl~r was
    covered by the Plaintiffs' patents and the circumstance now
                                                                     B
    admitted that no one, neither the plaintiff nor any one else,
    has a patent for Butachlor. The admission was e'itpressly made
    by PW-2, the power of attorney holder of the first plaintiff
    and Director of the second plaintiff company. The learned
    counsel for the plaintiffs also .admitted the same before us.
    PW-1, Dr. Dixon, Chemist of.the first plaintiff company, after
    explaining the use of an elDllsifying agent t in answer to a
    direct question, whether his company claimed any patent or
                                                                     c
    special knowledge for the use of any particular solvent or
    particular emulsifying agent, in the formulation in their
    patent, had to adtilit that they had no such patent or special
    knowledge. He further admitted that the use of solvent and
    elllllsifying agent on the active ingredient was one of the      D
    well-known methods used in the pesticide industry to prepare a
    marketable product. He also expressed his inability to say
    what diluents or emulsifying agents the defendant used in
    their process. PW-2 admitted that Butachlor was a common name
    and that the Weed Science Society of America had allotted the
    common name. He stated that "Machete" was the brand name under
                                                                     E
    which their company manufactured Butachlor. He also stated
    that there could be a number of concerns all over the world
    manufacturing Butachlor, but he was not aware of them. He
    admitted that they did not claim a patent for Butachlor. He
    stated that though his company did not claim a patent for
    Butachlor, they claimed a patent for the process of making a     F
    Butachloi em.ilsifiable concentrate to be used as a Herbicide
    composition for rice. Pursued further in cross-examination, he
    was forced to admit that they used kerosene as a solvent for
    Butachlor and an ell1llsifier manufactured by a local Indian
    company as ap elllllsifying agent. He then proceeded to state
    that he claimed secrecy with regard to the ·manufacture of
                                                                     G
    their forll1llation. When he asked further whether the secrecy
    claimed was with regard to the solvent or with regard t o the
  I stabilizer, he answered in the negative. He finally admitted
  [that his secret was confined to the active ingredient
  I Butachlor about which as we know there is no secret. · PW-3,
  \Robert Galson Depenning the patent agent of the first             H
    plaintiff under a power of attorney from the first plaintiff,
  !stated that it was he that had verified the plaint and that it
    128                  SUPREME COURT REPORTS      [1986] 1 s.c.R.

A   was on his instructions that the plaint was drafted. lie stated
     that according to him, by selling his formulations the
    defendant had infringed Patents Numbers 104120 and 125381,
     though he was unable to explain which part of his claim in
    Patent Number 104120 was infringed as he was not a Chemist. lie
    stated that he said so and was able to say so in consultation
    with the Managing Director of the second plaintiff company. He
B   stated that it was explained to him by PW-2 that both the
    Patents Numbers 104120 and 125381 were infringed.            He
    also admitted that it was he that had signed the specification
    of 104120 and while he was not sure whether he had signed the
    specification Number 125381, he saw that it had been signed by
    Depenning and Depenning.
c         We, therefore, see that Butachlor which was the common
    name for CP 53619 was discovered, even prior to 1968 as a
    Herbicide possessing the property of nontoxic effect on rice.
    The formula for the Herbicide was published in the report of
    the International Rice Research Institute for the year 1968
    and its common name Butachlor was also mentioned in the report
D
    of the International Rice Research Institute for the year
    1969. No one patented the invention Butachlor anJ it was the
    property of the population of the world. Before Butachlor or
    for that matter any Herbicide could be used for killing weeds,
    it had to be converted into an emulsion by dissolving it in a
    suitable solvent and by mixing the solution with an emulsi-
E
    fying agent. Emulsification is a well-known process and is no
    one's discovery. In the face of the now undisputable fact that
    there is no patent for or any secrecy attached to Butachlor,
    the solvent or the emulsifying agent and the further fact that
    the process of emulsification is no new discovery, the present
    suit based on the secrecy claimed in respect of the active
F
    agent Butachlor and the claim for the process of emulsifica-
    tion must necessarily fail. Under sec. 61(l)(d), a patent may
    be.revoked on the ground that the subject of any claim of the
    complete specification is not an invention within the meaning
    of the Act. Under sec. 64(e), a patent may be revoked if the
    invention so far as claimed in any claim of the complete
G
    specification is not new, having regard to what was publicly
    known or publicly used in India before the date of the claim,
    etc. Under sec. 64(1) (f), a patent may be revoked if the
    invention so far as claimed in any claim of the complete
    specification is obvious or does no~ involve any inventive
H
    step having regard to what was publicly known or publicly used
    in India or what was published in Indl.a before the priority
  MONSANTO CO. v. CORAMANDAL INDAG [CHINNAPPA REDDY, J.]       129

                                                                     A
 date of the claim (the words "or elsewhere" are omitted by us
 as the patents in the present case were granted under the
 Indian Patents and Designs Act, 1911, i.e., before the Patents
 Act 1970). "Invention has been defined by secc. 2(j) as
 follows:
             " Invention" means any new and useful -                 B

             ( i) a_
                   r t, process, method or manner of manufacture;

             (ii) machine, apparatus or other article;

             (iii) substance produced by manufacture, and
             includes any new and useful improvement of any of       C
             them, and an alleged invention."    ..

        It is clear from the facts narrated by us that the Herbi-
  cide CP 53619 (Butachlor) was publicly known before Patent
  Number 125381 was granted. Its foI'llJ.lla and use had already
  been made known to the public by the report of the Inter-          D
  national Rice Research Institute for the year 1968. No one
  claimed any patent or any other exclusive right in Butachlor.
  To satisfy the requirement of being publicly known as used in
  clauses (e) and (f) of sec. 64(1) 1 it is not necessary that it
  should be widely used to the knowledge of the consumer public.
  It is sufficient if it is known to the persons who are.engaged     E
  in the pursuit of knowledge of the patented product or process
  either as men of sciene or men of commerce or consumers. 'Ille
  section of the public who, as men of science or men of
  co111nerce, were interested in knowing about Herbicides ·which
  would destroy weeds but not rice, must have been aware of __the
~ discovery of Butachlor. 'Illere was no secret about the active     F
  agent ·Butachlor as claimed by the plaintiffs since there was
  no patent for Butachlor, as admitted by the plaintiffs.
  Emulsification was the well-known and common process by which
  any Herbicide could be used. Neither Butachlor nor the process
  of Emulsification was capable of being claimed by the
  plaintiff .11s their exclusive property. 'Ille solvent and the     G
  elD.llsifier were not secrets and they were admittedly not
  secrets and they were ordinary market · products. From the
  beginning to the end, there was no secret and there was no
  invention by the palintiffs~ The ingredients, the active
  ingredient, the solvent and the emulsifier, were known; the
  process was known, the product was known and the use was known.    H
  The plaintiffs were merely camouflaging a substance whose
    130                  SUPREME COURT REPORTS     [1986] 1 S.C.R.


A   discovery was known through out the world and trying to enfold
    it in their specification relating to Patent Number 125381.
    The patent is, therefore, liable to be revoked. We do not
    think that it is necessary for us to go into the various
B   questions of law so carefully and meticulously argued by Mr.
    Chellaswamy. The questions were no doubt interesting and arose
    for the first time. But we desire to keep our interest purely
    academic and within bounds. So we do not pronounce upon those
c   questions. The appeal is dismissed with costs.




    M.t.A.                                       Appeal dismissed.