Dismisses patent infringement case against sale of prosthesis on a cost-to-cost basis

In what could be music to the ears of many during the World Cancer Day on Tuesday, the Madras High Court has refused to restrain Mishra Dhatu Nigam (MIDHANI) Limited, a Hyderabad-based Central government enterprise, from manufacturing and selling titanium knee prosthesis on a cost-to-cost basis for cancer patients.

Dismissing a civil suit filed by the proprietor of a Chennai-based private enterprise, Justice V. Ramasubramanian held that the plaintiff selling the prosthesis at Rs.1.36 lakh each had not made out a case of patent infringement against MIDHANI which sold its prosthesis at Rs.39,200 each to Cancer Institute in Chennai and other hospitals.

The judge also recorded the submission of MIDHANI that it was primarily a company involved in manufacture of special metals and super alloys to meet the requirements of defence, aerospace, atomic energy, electronics and other strategic industries. It began making prosthesis as part of its Corporate Social Responsibility initiative undertaken at the instance of former President A.P.J. Abdul Kalam.

Tracing the history of prostheses since their emergence in 1951, the judge noted implants had undergone slender advancements from time to time to make them sync with human anatomy and turn them into perfect replacements for the natural bone and knee joints. Since the implant engineered by the plaintiff passed the tests of novelty, non-obviousness and usefulness, he was certainly entitled to a valid patent, the judge held. “However, as a corollary, the defendants are also entitled to the benefit of dissimilarities that exist between their prosthesis and the plaintiff’s prosthesis,” he added.

Mr.Justice Ramasubramanian concluded the 130-page judgment, which discusses both foreign and domestic patent laws in detail, by stating: “The distinguishing features of the product of the first defendant may not qualify their product for a valid patent registration. But they will certainly provide a shield for a defendant against an action in infringement of the patent. “Just as the plaintiff is entitled to every substantial advancement of an existing product and claim that there was an inventive step involved, other people are also entitled to make similar claims… The first defendant is not even seeking a patent right, but merely pointing out that they were also entitled to make modifications on the basic features of a product in existence for five decades.”