LALLUBHAI CHAKUBHAI JARIVALA Vs. SHAMALDAS SANKALCHAND SHAH

JUDGEMENT

(1.) This is an appeal from a judgment of Broomfield, J., in a patent action. The material facts are that in the year 1927 the plaintiff, who is a chemist, started it, business in partnership with one Girdhanlal, who is the brother of the defendant, the name of the firm being Jarivalla Shah & Co. The defendant was a clerk in the employment of the firm The firm had an experimental branch which carried on business in the name of Jasco & Co., that firm being in charge of one Dr. Patel. In August 1928 the plaintiff left for Europe, leaving Dr. Patel in charge of the chemistry department. In February, 1929 the plaintiff returned to Bombay, and shortly thereafter Dr. Patel left the employment of the firm. In or about October 1929 a firm called Harakchand Shivji & Co. approached the plaintiff and asked him whether he could introduce a system of producing white almonds by some process of bleaching the shells. On November 9, 1929, the plaintiff commenced experiments in that connection in his laboratory. Early in 1930 the business of Jasco & Co. was sold to a firm called Chimanlal Chunilal & Co.; and a chemist mimed Varmani, who had been employed in the Jasco Company and is a material witness, continued in the employment of the purchasers. In April 1929 Harakchand Shivji & Co. commenced to sell whitened almonds which bad been treated by a process which the plaintiff had tried in his laboratory. For some months that process was used, but it was found unsatisfactory because the process affected the taste of the kernal of the almonds, and in the autumn of 1950 Harakchand Shivji & Co. ceased to deal in those almounds. They had been paying the plaintiff Rs. 300 per month for his services, and when they ceased to deal in the almonds they ceased experimenting for about a year, the plaintiff discovered a satisfactory process for whitening the shells of the almonds. Varmani helped the plaintiff in his experiments and learned about the process in confidence. That process was finally established by tests on almonds by February 27, 1931. In or about November 1930, Harakchand Shivji & Co. re-started paying Rs. 300 per month to the plaintiff and they started to sell almonds dealt with under the new process. In or about January 1931, Varmani ceased to be employed by Jasco & Co., and in or about June he made an arrangement with the defendant under which he was to teach the defendant how to bleach almonds in his factory, and the defendant made arrangements with the merchants with whom he was doing business by which the latter agreed to purchase from the defendant almonds treated under the process explained by Varmani and to erect a factory where the process could be employed. This was done by October, 1931. On July 4, 1931, the plaintiff applied for letters patent in respect of his process of treating almonds, and the letters patent were granted on April 27, 1932, the grant relating back to the date of the application.

(2.) The first issue raised before the learned Judge was, whether the process described in the specification, Ex. A to the plaint, is an invention, and the learned Judge answered that in the negative. Now the salient feature of the process is that bleaching powder is used on the almonds in conjunction with sulphur dioxide, and they are treated under a pressure of five lbs. per square inch in a closed chamber. I think the criticism which may be made upon the very careful judgment of the learned Judge on this issue is that he is rather too analytical and he considers the various component parts of the specification without considering the combination. It seems to me on the evidence to be clear that the particular combination which gave satisfactory commercial results for the first time was only arrived at by the plaintiff after a year of experiments, and that no one else had arrived at a similar process, and further that there was a demand in the market for whitened almonds--though why there should be such a demand I do not know. But the evidence is that there was a demand for these whitened almonds, and the merchants thought they could get a better price for almonds in that state than for almonds in their natural state; and in has proved that, he showed a sufficient amount of inventive genius in arriving at this method to justify the grant of letters patent in respect thereof. I think, therefore, the first issue should be answered in the affirmative.

(3.) Issue No. 2 is whether the plaintiff is the true and first inventor of the said process. That issue was not answered by the learned Judge because the answer to it was unnecessary in view of his answer to Issue No. 1. But he indicates a view that Dr. Patel was the first inventor. I am not inclined to accept that view. Dr. Patel left the plaintiff's firm in March 1929, and he says that he had been experimenting on almonds and left his notes of experiments with the firm. Those notes were not forthcoming at the trial. They were afterwards discovered by the plaintiff, who made an application to review the judgment in the light of those notes. That application quite properly failed. The notes are not in evidence, and I only mention them to show that their suppression cannot be charged against the plaintiff. Assuming that the plaintiff did get the notes of Dr. Patel, and that the notes dealt with almonds, it seems to be quite plain that his process cannot have been the one which the plaintiff subsequently invented, because if it had been, there was no reason why the plaintiff in the middle of 1930 should have introduced a different and unsatisfactory system and should have spent a year in discovering his new process. I have no doubt therefore that Issue No. 2 should also be answered in the affirmative. Then Issue No. 3 relates to prior user. As originally framed it was in these terms: Whether the process and other matters in respect of which the plaintiff claims rights as patentee were publicly used (long) prior to the issue of the patent by the firm of Jarivalla Shah & Co. Then that issue was amended, after the close of the plaintiff's case, by adding the words "or by anybody else." Now the only plea with regard to this issue was of prior user by the firm of Jarivalla Shah & Co. It is proved that Girdharlal, who was the only partner with the plaintiff, left the firm in October 1930, before the invention was made and therefore the invention could not have been used by the firm of Jarivalla Shah & Co. I think the written statement and original issue might be treated by a liberal construction as including prior user by the plaintiff's firm or by the plaintiff, but in my view, the addition to the issue of the words "or by anybody else" ought not plaintiff's case. No doubt there may be cases in which, at the close of the plaintiff's case, or even later, it may appear that the issues as originally framed do not bring out the real point in dispute. But, in my opinion, no such case was made out here. One of the plaintiff's witnesses had mentioned the names of certain firms who were alleged to be infringing the plaintiff's patent, and I gather that these firms were approached by the plaintiff's advisers with a view to find out whether they were prepared to say that they had treated nuts in accordance with the plaintiff's process before July 1930, when the application was made for the patent, and the issue was amended to let in that evidence. Of course, it is obvious that those firms were interested in attacking the plaintiff's patent which they were alleged to have been infringing. If their evidence be admitted, it is clearly necessary to scrutinize it with great care.