Here's a Guest Post on the application of Gillette Defence in India by Avinash Kumar Sharma, a litigator from the High Court of Delhi:
The concept of a Gillette Defence was put forth by Lord Moulton in the case of Gillette safety razor company v. Anglo American Trading Company Limited in the year 1913. The concept kicks in whenever a defendant in a suit for patent infringement takes the plea that the product or process implemented by it is covered by prior art. It is based on the premise that there can be no infringement of a patent whose invention is covered by a lapsed patent or an invalid patent. In fact, enforcement of such a patent would amount to encroaching on the realm of commons and granting monopoly over it.
Terrell on the Law of Patents has summed up Gillette Defence as follows:
"Infringement not novel" (Gillette defense) Since no relief could be obtained in respect of an invalid patent, if the defendant could prove that the act complained of was merely what was disclosed in a publication which could be relied on against the validity of the patent, without any substantial of patentable variation having been made, he had a good defense. This is the so-called Gillette defense arising out of the world of Lord Moulton in Gillette Safety Razor Co. VS. Anglo American Trading Co. where he said: "I am of the opinion that in this case the defendant's right to succeed can be established without an examination of the terms of the specification of the plaintiff's letters patent. I am aware that such a mode of deciding a patent case is unusual, but from the point of view of the public it is important that this method of viewing their fights should not be overlooked. In practical life it is often the only safeguard to the manufacturer. It is impossible for an ordinary member of the public to keep watch on all the numerous patents which are taken out and to ascertain the validity and scope of their claims. But he is entitled to feel secure if he knows that that which he is doing differs from that which has been done of old only in non- patentable variations such as the substitution of mechanical equivalents or changes of material, shape or size. The defense that 'the alleged infringement was not novel at the date of the plaintiff's letters patent,' is a good defense in law, and it would sometimes obviate the great length and expense of patent cases if the defendant could and would put forth his case in this form, and thus spare himself the trouble of demonstration on which horn of the well-known dilemma the plaintiff had impaled himself, invalidity or non-infringement."
It appears that this defence was invoked and endorsed for the first time in India in the case of Ravi Raj Gupta v. Acme Glass Mosaic Industries. In the said case, the principal defence invoked by the defendant was that it was using a well-known process for manufacturing tiles, which was covered by a lapsed patent. Holding that the patent sought to be enforced was prima facie not an invention within the meaning of Section 2(j) of the Patent Act 1970 in view of the defence, the Court refused to grant the Plaintiff interim injunction.
This defence has also been accepted by the High Court of Calcutta in the case of Hindusthan Lever Limited v. Godrej Soaps Limited and by the Delhi High Court in J Mitra v Kesar Medicaments in 2008. In the latter judgement, the Delhi High Court held thus:
“A perusal of the decision in the cases of Ravi Raj Gupta and Gillette Safety Razor Co. cases (supra) shows that where it is shown that the act complained of is what was disclosed in a prior publication, which can be relied on against the validity of the patent, and no patentable or substantial alteration has been made in respect thereof, there is a good defense.”
In the facts of the case though, the defendant was unable to show that the patented invention was covered by the prior art cited by it. The practical consequence of invoking the Gillette Defence is that the scope of the trial can be limited to the said defence since it is assumed that but for the defence, the defendant does not refute the allegation of infringement. This would effectively require the defendant to lead evidence.