Prof & LawyerPuttu Guru Prasad,

M.Com., M.B.A., L.L.B., M.Phil., PGDFTM.,

AP.SET., ICFAI CMF., (PhD) at JNTUK.,

Senior Faculty for Management Sciences,

S&H Department, VVIT, Nambur,

1. Bowman v. Monsanto Co.,

2. Abbott .Vs. Sandoz

3. Horlicks vs Kartick Sadhukan

4. Amar Nath Sehgal v. Union of

India,

5. Colgate Palmolive vs. Mr. Patel & Others

6. DIAMOND v. CHAKRABARTY

Bowman v. Monsanto Co., 569 U.S. ___(2013) was a United States SupremeCourt patent decision in which the Courtunanimously affirmed the decision ofthe Federal Circuit that the PatentExhaustion Doctrine does not permit afarmer to plant and grow saved, patentedseeds without the patent owner's permission.

The case arose after Vernon HughBowman, an Indiana farmer,bought Transgenic Soybean seedsfrom a local grain elevator for hissecond crop of the season.

Monsanto originally sold the seed fromwhich these soybeans were grown tofarmers under a limited use license thatprohibited the farmer-buyer from usingthe seeds for more than a single seasonor from saving any seed produced fromthe crop for replanting.

The farmers sold their soybean crops(also seeds) to the local grain elevator,from which Bowman then bought them.After Bowman replanted seeds for hissecond harvest, Monsanto filed alawsuit claiming that he infringed ontheir patents by replanting soybeanswithout a license.

In response, Bowman argued thatMonsanto's claims were barredunder the Doctrine of PatentExhaustion, because all futuregenerations of soybeans wereembodied in the first generationthat was originally sold.

In an Unanimous opinion writtenby Justice Elena Kagan, the Supreme Courtruled that Bowman's conduct infringed uponMonsanto's patent rights and that theDoctrine of Patent Exhaustion does notpermit a farmer to reproduce patentedseeds through planting and harvestingwithout the patent holder's permission.

The Court held that, when a farmerplants a harvested and saved seed,thereby growing another soybeancrop, that action constitutes anunauthorized "making" of thepatented product.

The case garnered attention in part dueto its potential impact on policy aboutGenetically Modified Crops and self-replicating technologies, and due tothe involvement of Justice ClarenceThomas, who previously served as alawyer for Monsanto.

Abbott v. Sandoz was a US patentlaw case argued before the United StatesCourt of Appeals for the Federal Circuit thatestablished a bright-line ruling regardingclaims of patent infringement relating todisagreements over so-called “Product-by-Process" claims. The case was decided onMay 18, 2009

Background of the case. Abbott Labs had a patent on a specific

drug called Omnicef used to combat earinfections. Lupin Limited had a courtrule that a generic form of Omnicef itproduced did not infringe on Abbott'spatent since their process to make thedrug was different.

After the court had ruled in Lupin'sfavor, Abbott appealed and the casewas combined with several other legalsuits against smaller pharmaceuticalcompanies, and thus was renamedAbbott v. Sandoz. The federal courtaffirmed the lower court's decision

Brief history of the Case For several years, the courts have disagreed on

the product-by-process definition. Product-by-Process refers to the question of determining ifa product is legally different from another if itis created by a different process.

Federal courts have offered contradictoryresolutions on the subject. The court determinedthat a patent may limit itself if it specificallydefines the process of creation

Decision of the Federal court: Despite the legal discrepancies, the U.S. Court of

Appeals for the Federal Circuit (CAFC) held thatusing a different process in this case did notinfringe on Abbott's patent and ruled inSandoz's favor, along with ruling in favor of theother small pharmaceuticals companies.

Since Abbott had not patented all processes tocreate its drug, it could not protect from theprocesses being used by others.

Importance of the case outcomes: This case further enforces the Product-by-

Process definition, and holds that a patent doesnot protect from infringement through adifferent process unless necessarily described.

Patent-holders seeking to cover their productsentirely must find ways to protect everyprocess to create the same item if they wantcomplete protection from infringement.

This case revolves around the principle ofinfringement of trademark and copyrightlaws.

HORLICKS Limited (hereinafter referred toas H) is a foreign company engaged inmanufacturing of a wide range of foodproducts, including foods for infants, childrenand invalids, malted milk, biscuits, toffees, etc.under the trademark HORLICKS, of which itclaims to be the original registered owner.

The trademark 'HORLICKS' was registered inIndia in relation to foods for infants, childrenas well as mailed milk as early as 1943, forbiscuits in 1961 and in respect of toffees in1966.

H is also the owner of copyright ofHORLICKS label and is exclusively entitled toreproduce and alter the features of theHORLICKS label in any material form as itdeems fit.

Kartick Confectionery (hereinafter referredto as K) started manufacturing a similar look-alike product, namely, toffees under thetrademark ‘HORLIKS’ infringing thetrademark rights enjoyed by 'HORLICKS'.

K also reproduced the label of H therebyamounting to the infringement of thecopyright of the latter.

H contended that since the consumers of theproduct under the trademark HORLICKSincluded infants, children and adults it wasthe obligated to ensure that the quality andstandard of the product met the prescribedrequirements under the law.

They further stated that they ensured thatthe products under the trademarkHORLICKS were made under strict hygienicconditions.

Accordingly, if K is permitted to use thechallenged trademark HORLIKS, the right ofwhich was never granted neither permitted byH, the latter was at all times at a risk of facing

the consequences of K’s conduct andunauthorized use.

Hence they filed for a suit seeking topermanently restrain K from infringing the H'strademark HORLICKS and also its copyrightswhich it enjoyed over the product.

A Single Judge Bench of the Delhi HighCourt comprising of Justice BChaturvedi found out that H was indeedthe original registered owner of thetrademark HORLICKS in respect of foodfor children, malted milk, biscuits andtoffees and all other products as a resultof prior marketing and registration.

With regards to toffees registration wasdone in India in 1966. And the companycarried out various advertisements ofits products under the trademarkHORLICKS and thereby enjoyedsufficient goodwill and reputation forits products in India.

The court ruled that use of the label andtrademark HORLIKS by K in respect oftoffees is very likely to cause confusionamong the people.

It would thereby lead to deception, majorlyas a result of K having copied the trademarkHORLICKS and also its label as and how itappears on the products manufactured andmarketed by H.

Accordingly the court restrained Kfrom manufacturing and sellingtoffees or other related goods underthe trademark HORLIKS or underany other name that is similar inexpression to H’s trademarkHORLICKS.

Further the court barred K fromreproducing, printing or publishingany label which was a merereproduction or imitation of K’sHORLICKS label, therebyprotecting the latter’s copyright tothe label.

This is a landmark case decidedby the Delhi High Court which forthe first time upheld the MoralRight of an author for his workunder the Indian Copyright Act.

Amar Nath Sehgal (hereinafterreferred to as the plaintiff) was arenowned Artist and Sculptor. Hecreated a Mural to be placed in thelobby of Vigyan Bhawan, a premierconvention center of Governmentof India, in New Delhi.

It was done at the direction of theappropriate authorities of theconvention center.

In the year 1979 the plaintiff cameto know that the mural created byhim was removed from the lobby ofthe convention center away fromthe public view.

This was done without the priorconsent or permission of theplaintiff. Thereafter the plaintiffmade several requests to theappropriate authorities to restorethe mural. However, in spite of thatthe mural was not restored.

Aggrieved by this the plaintiff filed a suitbefore the Delhi High Court under theSection 57 of the Copyright Act, 1957 forviolation of his rights.

He sought a permanent injunction againstthe authorities of the convention center,thereby restraining them from distorting ordamaging his mural. And to further pay himthe damages for the same.

The case was heard by the Single JudgeBench of the Delhi High Courtcomprising of Justice P Narendra jog.

He observed that the author had aexpress right in law to preserve,protect and nurture his creationsthrough his moral rights.

Further that the Section 57 of theCopyright Act enables to protectthe cultural heritage of the countrythrough the moral rights of theartist.

The section provides that the author hasthe right to restrain or claim damages inrespect of any distortion, mutilation,modification or other act in relation tothe said work which is done before theexpiration of the term of copyright ifsuch distortion, mutilation, modificationor other act would be prejudicial to hishonor or reputation.

Thus, the court ruled that theplaintiff had the right to maintain anaction under Section 57 eventhough the copyright of the muralvested with the authorities of theconvention center.

It further held that the authoritiesnot only violated the plaintiff'smoral rights with respect to themural but also violated theintegrity of the work in relation tothe cultural heritage of the countryas such.

Hence, the court ordered theauthorities of the convention centerto return the remainder of themural to the plaintiff. And also topay the damages to the plaintiff forall the damage caused to his work.

This is a case relating to the legalprinciple of infringement of atrademark. It was decided by aSingle Judge Bench of the DelhiHigh Court comprising of Justice MMudgal.

Colgate Palmolive Co. Limited(hereinafter referred to as theplaintiffs) is a company that hasbeen manufacturing and marketingdental products in India under thewell-known trademark 'COLGATE'since 1937.

The company undoubtedly is also aninternational leader in the trade of toothpaste and other dental related products. Theplaintiffs registered their trademark in Indiain the year 1954.

Since then they have always marketed theirproducts in Red Cartons which had the wordCOLGATE inscribed in white on it. They useda Particular Font for printing the Trademarkon the Cartons.

Further they had even registered theirlabel relating to colors in India in theyear 1959.

From then on they have been exclusivelyenjoying the ownership rights over thetrademark 'COLGATE' and also the labelcontaining the Red and White Colorsinscribed on it.

In the year 2003 the plaintiffs came toknow that Mr. Patel and hiscompany(hereinafter referred to as thedefendants) were using the plaintiff'sCOLGATE trade dress in the packagingof their products with relation to thelayout and color combination of thecartons.

The defendants used the word 'AJANTA'printed in White color in a Red backgroundin their cartons.

Subsequently the plaintiffs filed a suit beforethe Delhi High Court seeking a permanentinjunction against the defendants, therebyrestraining them from using the TradeDress that was similar in layout andappearance even though the names printedon the cartons were different.

They contended that the defendantshad infringed their trademark andcopyrights.

And further that they were indulging inunfair competition by trying to selltheir products using the brand name oftrademark COLGATE.

On the other hand, the defendantscontended that there was nothingdistinctive in the color combination ofthe plaintiff's container and that theplaintiff could not have a trademark incolor combination.

Further they claimed that the Red andWhite Label was common to theToothpaste Trade.

The Honorable Judge observed that essentialfeature of the plaintiffs' mark was COLGATEinscribed in white color on a red backgroundand not merely red and white colorcombination alone.

He held that the printing of the word‘AJANTA’ on the defendants’ cartons in whitecolor on a red background does not give riseto any infringement of the plaintiffs’ tradedress.

Also affirmed the contention of thedefendants that red was a basic colorand the red & white color combinationis common to the tooth paste trade inthe domestic as well as the internationalmarket.

Hence there cannot be anymonopolization of the same by anyparty.

However, he finally held that thedefendants were liable for tryingto sell their products using thebrand name of COLGATE sincethere was sufficient Resemblancebetween the plaintiffs' and thedefendants' product.

Further the court ruled that if thedefendant alters the packaging therewould not arise any question ofinfringement of the copyright andtrademark of the plaintiff.

Accordingly the court ordered them tosubstitute Gold for White color in thedescription of ‘AJANTA’ in their cartons.

Thus, the injunction application wasdisposed of by the court and thedefendants were permitted tomarket their products providedthey made the RequiredAlterations in their packaging of theproducts.

Title 35 U.S.C. 101 provides forthe issuance of a patent to aperson who invents or discovers"any" new and useful"manufacture" or "compositionof matter."

Respondent filed a patentapplication relating to his invention

of a human-made, geneticallyengineered bacterium capableof breaking down crude oil, aproperty which is possessed by nonaturally occurring bacteria.

A patent examiner's rejection ofthe patent application's claims forthe new bacteria was affirmed bythe Patent Office Board of Appeals

on the ground that living thingsare not patentable subjectmatter under 101.

The Court of Customs andPatent Appeals reversed,concluding that the fact thatmicro-organisms are alive iswithout legal significance forpurposes of the patent law.

MR. CHIEF JUSTICE BURGER delivered the opinion of the Court.

We granted Certiorari to determinewhether a live, human-made micro-organism is patentable subject matterunder 35 U.S.C. 101.

In 1972, respondent Chakrabarty, amicrobiologist, filed a patent application,assigned to the General Electric Co.

The application asserted 36 claimsrelated to Chakrabarty's invention of"a bacterium from the genusPseudomonas containing therein atleast two stable energy-generatingplasmids, each of said plasmidsproviding a separate hydrocarbondegradative pathway.

" 1 This human-made, geneticallyengineered bacterium is capable ofbreaking down multiple components ofcrude oil.

Because of this property, which ispossessed by no naturally occurringbacteria, Chakrabarty's invention isbelieved to have significant value for thetreatment of oil spills.

2 .Chakrabarty's patent claims were ofthree types:

First, process claims for the method ofproducing the bacteria;[447 U.S. 303, 306]

Second, claims for an inoculumscomprised of a carrier material floatingon water, such as straw, and the newbacteria;

and third, claims to the bacteria themselves.

The patent examiner allowed the claimsfalling into the first two categories, butrejected claims for the bacteria. His decisionrested on two grounds:

(1) that micro-organisms are "products ofnature," and

(2) that as living things they are notpatentable subject matter under 35 U.S.C.101.

Chakrabarty appealed therejection of these claims to thePatent Office Board of Appeals,and the Board affirmed theexaminer on the second ground.

3 Relying on the legislative history of the1930 Plant Patent Act, in whichCongress extended patent protection tocertain asexually reproduced plants,the Board concluded that 101 was notintended to cover living things such asthese laboratory created micro-organisms.

The US Supreme Court ruled that geneticallyaltered micro-organisms were indeedpatentable based on the following criteria:

They were man made. They were products of human manipulation

and therefore considered similar to any otherinventions.

They had a specified industrial application

If a new Act was needed to providepatent protection for the plants, it wasequally necessary for bacteria.

Yet Congress Provided for patents onplants but not on these bacteria.

In short, Congress decided to make onlya subset of animate "human-madeinventions," "ibid”., patentable.

Prof & Lawyer .Puttu Guru Prasad,M.Com., M.B.A., L.L.B., M.Phil.,

PGDFTM., AP.SET., ICFAI TMF.,(PhD) at JNTUK.,

Senior Faculty for Management Sciences,

Vasireddy Venkatadri Institure of Technology

Nambur , Guntur, A.P

Cell: 93 94 96 98 98, 9059 457 336

Email: pgpjntuk@gmail.com

My Blog Link: puttuguru.blogspot.in