Application of John T. Suh, Jeffrey N. Barton and John R. Regan, filed March 19, 1981, Serial No. 245,407.
Patent granted to Milton L. Hoefle and Sylvester Klutchko on August 17, 1982, Patent No. 4,344,949 filed February 20, 1981, Serial No. 236,397. Accorded benefit of Serial No. 193,767 filed October 3, 1980.
This interference involves an application of Suh et al. (Suh), assigned to Rorer Pharmaceutical Corporation, and a patent of Hoefle et al. (Hoefle), assigned to Warner-Lambert Company.
n is an integer from 1 to 4 inclusive; and the pharmaceutically acceptable salts thereof.
Suh's claims 2 to 26 and Hoefle's claims 1 to 4, 14 and 15 correspond to the count. No question of interference-in-fact or separate patentability of claims in accordance with 37 CFR 1.633(b) and (c)(3) and (4) has been raised.
In the Decision on Preliminary Motions, the examiner-in-chief (EIC) granted, inter alia, Hoefle's preliminary motion under 37 CFR 1.633(c)(4) to designate claims 5 to 13 as not corresponding to the count and Hoefle's preliminary motion under 37 CFR 1.633(f) for benefit of his U.S. parent application. Suh opposed both motions. After rendering the decision, the EIC set times for both parties to present priority testimony. After the close of Hoefle's testimony period, Suh filed motions (Paper Nos. 121 to 123) to compel the testimony of the senior party's inventors and for additional discovery. In the order of March 13, 1989, the EIC denied the motions and a panel of this Board denied Suh's request for reconsideration of the order. Subsequently, Suh presented rebuttal testimony and filed a belated preliminary motion (Paper No. 177) for judgment. Both parties filed records and briefs and appeared, through counsel, at final hearing.
Each party filed with its brief a motion [FN1] to suppress portions of its opponent's record. Oppositions and replies were filed with respect to the motions. Each motion will be considered, infra, insofar as it relates to the exhibits and testimony discussed herein.
Before us for consideration is Hoefle's motion (Paper No. 216) to strike certain sections of Suh's reply brief. Suh has filed an opposition thereto.
The motion requests that four sections of Suh's reply brief be stricken or denied consideration.
The first concerns pages 2 to 3, Section II and pages 23 to 28, Section B. The motion states that the reply brief is attempting to alter the facts without addressing any points raised in Hoefle's brief by urging that Suh's conception is for a broad class of dipeptide compounds, an argument which, according to Hoefle, should have been presented in Suh's main brief. In his opposition, Suh states that he has merely amplified an argument appearing on pages 74 to 77 of his main brief.
greatly changed priority case which improperly introduces new positions and arguments which do not refute any points raised in Hoefle's opening brief.
by alleging a successful preparation of a compound within the count by Barton. The motion contends that this is a new position which suggests that Suh possessed a method for synthesizing a compound of the count earlier than alleged. In his opposition, Suh states that this is not a new position because the argument presented here is fully set forth in the opening brief at pages 100, 101, and 107 to 116.
by adopting the teaching in an article by Cushman et al. [appearing in a book entitled, "Angiotensin Converting Enzyme Inhibitors"] as being the mental processes of the inventor, Dr. Suh.
The motion contends that, according to Suh, the book shows the state of the art in May of 1980. In his opposition, Suh states that the publication, which was introduced under 37 CFR 1.682, is properly in evidence and discussed in the main brief at pages 39 to 42.
supportable, factual or legal principal it desires in an effort to refute the conception case proffered by the senior party, which case was presented for the first time by the senior party principal Brief. This is the purpose of a Reply Brief. The fact that Suh, et al. attack the Hoefle, et al. conception on various grounds including evidentiary grounds does not mean that Hoefle, et al. are entitled to present additional argumentation.
Pursuant to 37 CFR 1.656(b), the opening brief of the junior party must contain a statement of the issues presented for decision, a statement of the facts relevant to the issues and an argument which shall contain the contentions of the party with respect to the issues and the reasons therefor. The purpose of the rule is to provide the senior party an opportunity to present his views on all grounds. Cf. Fisher v. Bouzard, 3 USPQ2d 1677 (BPAI 1987); Moller v. Harding, 214 USPQ 730 (Bd.Pat.Int.1982).
Bearing this principle in mind, we agree with Hoefle that the objection to the fourth section, i.e., pages 38 to 51 of the reply brief, is well taken. In this section, Suh raises for the first time a hearsay issue with respect to Hoefle's case for conception. This issue should have been presented earlier in Suh's opening brief in accordance with 37 CFR 1.656(b). Nowhere in his opposition does Suh contend that this issue was so presented in his opening brief. Since new material does not belong in the reply brief, see, inter alia, Photis v. Lunkenheimer, 225 USPQ 948 (Bd.Pat.Int.1984), the motion is granted to the extent that we will not consider the issue.
*4 With respect to the objections to the first three sections, the motion is denied. Since we find support for these sections in Suh's opening brief, we do not agree with Hoefle that new arguments are being presented. Accordingly, these sections of the reply brief are entitled to consideration.
During oral argument, Suh withdrew the request in his brief that we review the EIC's decision concerning the designation of Hoefle's claims 5 to 13 as not corresponding to the count. Accordingly, we will not consider the issue.
The Hoefle brief raises an issue of inequitable conduct, which we will not consider. It is the policy [FN2] of the PTO not to consider such an issue. See the Commissioner's Notice, dated September 8, 1988, 1095 O.G. 16, as clarified in his Notice, dated October 17, 1988, 1096 O.G. 196.
1. Whether Hoefle's claims corresponding to the count are unpatentable as urged in Suh's belated preliminary motion for judgment?
2. Whether Hoefle is not entitled to the benefit of his U.S. parent application as urged in Suh's opposition to the Hoefle preliminary motion to be accorded benefit?
3. Whether the EIC improperly denied Suh's motions to compel testimony and for additional discovery as urged in Suh's brief?
4. Whether Suh's record establishes a prior conception coupled with diligence just prior to Hoefle's entry into the field up to Suh's reduction to practice (actual or constructive)?
On August 17, 1989, approximately 34 months after the close of the preliminary motions period, Suh filed a preliminary motion (Paper No. 177) under 37 CFR 1.633(a) for judgment urging that Hoefle's claims 1 to 4, 14 and 15 corresponding to the count are unpatentable. An opposition and a reply thereto have been filed.
Pursuant to 37 CFR 1.655(b)(3), a party in the same position as Suh is not entitled to raise for consideration at final hearing a matter which could have been properly raised by motion unless the party shows good cause why the issue was not so timely raised. Accompanying the preliminary motion is a miscellaneous motion (Paper No. 178) under 37 CFR 1.635 and § 1.646(b) wherein Suh attempts to show such good cause.
The miscellaneous motion states that the preliminary motion (Paper No. 177) could not have been filed earlier because it is based upon the testimony of the Hoefle inventors. However, the preliminary motion is not based entirely on testimony because it urges the unpatentability of Hoefle's claims because of (1) certain prior arts patents, (2) interference estoppel resulting from Hoefle's loss of a prior interference to Suh and (3) a public disclosure by Merck at a Medicinal Chemistry Symposium held at Rensselaer Polytechnic Institute on June 18, 1980. Suh states that the Hoefle inventors through their testimony admitted that it would have been obvious to one skilled in the art to combine the prior art patents in order to obtain compounds which would render obvious the Hoefle claims, even though the prior art patents provide no motivation for their combination.
*5 We agree with Hoefle that Suh has not shown good cause within the meaning of 37 CFR 1.655(b)(3) to excuse his failure to timely raise the issue of patentability by preliminary motion. In our view, Suh was aware of, or should have been aware of, the prior art patents, the interference estoppel argument and the public disclosure at the time preliminary motions were due. Thus, it appears that this belated preliminary motion was filed because of a change of opinion or purpose, which does not constitute good cause for excusing the belatedness of a motion. See 2 Rivise and Caesar, Interference Law and Practice, § 270 The Michie Co. 1943).
Prior to the expiration of the preliminary motions period, Suh had available to him experts, such as the Suh inventors, who knew of, or could have been made aware of, both the Merck public disclosure and the prior art patents. Thus, Suh was in possession of the necessary evidence to enable him to prepare affidavit(s) setting forth those matters (motivation necessary to combine these patents) which were testified to by Hoefle and which are now being relied upon by Suh to show unpatentability [FN3]. By being in possession of this evidence, Suh had no legitimate reason for not presenting it in a timely filed motion. Cf. Hanagan v. Kimura, 16 USPQ2d 1791 (Comm'r.Pat.1990); Orikasa v. Oonishi, 10 USPQ2d 1996, note 4 (Comm'r.Pat.1989).
Assuming for the sake of argument that Suh was not in possession of the necessary evidence during the preliminary motions period, we do not consider that the testimony of the Hoefle inventors concerning the development of their invention constitutes an admission of unpatentability. An admission must be clear and unmistakable. 3 Rivise and Caesar, "Interference Law and Practice", Section 402, page 1791 (The Michie Co. 1947). It is settled that an inventor's testimony as to how he developed an invention is not relevant to an obviousness analysis because the inventor may be of a higher level of skill than someone of ordinary skill in the art and what is obvious to the inventor would not necessarily have been obvious to one of ordinary skill in the art. Cf. Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 228 USPQ 90 (Fed.Cir.1985).
For the foregoing reasons, we hold that Suh has not shown good cause within the meaning of 37 CFR 1.655(b)(3) why this preliminary motion (Paper No. 177) could not have been filed earlier. Suh's excuse that the motion is based upon testimony is not substantiated by the record. Accordingly, we will not consider the motion.
We have carefully reviewed the arguments in the parties' briefs and we find that we agree with the EIC that Hoefle is entitled to the benefit of his U.S. parent application Serial No. 193,767, filed October 3, 1980.
*6 For a party to be accorded the benefit of a U.S. application under 35 U.S.C. 120, the application must satisfy the requirements of 35 U.S.C. 112, first paragraph, for an embodiment within the scope of the count in the special situation the count is drawn to a genus and the previously filed application discloses only a species thereof. Weil v. Fritz, 572 F.2d 856, 196 USPQ 600, note 16 (CCPA 1978).
We find that the application contains a written description for at least one species within the scope of the count. Nowhere does Suh allege otherwise. During the preliminary motions period, Suh filed an opposition (Paper No. 20) to Hoefle's preliminary motion under 37 CFR 1.633(f) for benefit of his parent U.S. application. The opposition urges that Hoefle is not entitled to the benefit of the application because the application (i) fails to "disclose or claim the compounds of Claims 5-13" of the involved Hoefle patent and (ii) contains "no written description, no enabling disclosure, nor any basis for asserting the subject matter of the claims [5 to 13]." These claims were designated as not corresponding to the count here. Clearly, these arguments did not address the question of whether Hoefle's parent application satisfies the requirements of 35 USC 112, first paragraph, so as to constitute a constructive reduction to practice of the count.
Suh's opening brief at pages 117 and 118, contends that the foregoing arguments were merely an "exemplification" and "illustrative of the deficiencies in the parent application." Then on pages 118 to 123, the brief argues for the first time that the application fails to disclose an operable method or its best mode (at the time of filing) for making a compound within the scope of the count.
We have not given these new arguments any consideration. Pursuant to 37 CFR 1.655(b)(2), Suh is not entitled to raise for consideration at final hearing a matter which properly could have been raised in an opposition to a preliminary motion. Cf. Bayles v. Elbe, 16 USPQ2d 1389 (BPAI 1990). If Suh desired to rely upon these new arguments, he should have presented them in his opposition to the motion in accordance with 37 CFR 1.638(a), which requires that the opposition shall (1) identify any material fact set forth in the motion which is in dispute and (2) include an argument why the relief requested in the motion should be denied.
For the foregoing reasons, we hold that Hoefle is entitled to the benefit of his parent application, Serial No. 193,867.
Suh requests that we review the EIC's order of March 13, 1989 (Paper No. 141), wherein the EIC denied Suh's motions (Paper Nos. 121 to 123) to compel the testimony of the Hoefle inventors and for additional discovery.
*7 The record shows that during his assigned testimony period, Hoefle presented testimony to show conception. It is one of Suh's positions in the various papers filed before the EIC that Hoefle's conception was incomplete because Hoefle did not possess at the time thereof an operative method of making the compounds within the scope of the count.
the requested discovery has not been shown to relate to any relevant issue(s) which can be raised by Suh at final hearing. For example, Suh has not shown that Interrogatory No. 2, which is directed to the identity of the persons who "participated in the preparation" or "contributed to the preparation" of Hoefle's applications, has any relevance to the issue of whether Hoefle had conceived of an operative method for making the compounds of the count.
We have reviewed the [EIC's] decision in light of the arguments raised in the request [Suh's request for reconsideration] but we are not persuaded that the EIC misapprehended or overlooked any points in rendering his decision. The testimony to be taken from Hoefle concerning the "synthetic approaches actually taken and actually resulting in the achievement of the compounds in issue" and the best mode contemplated by Hoefle for preparing the compounds at the time the Hoefle parent application was filed would not be relevant to the question of whether Hoefle possessed at the time of his alleged conception, some four months prior to the filing of the application, an operative method for preparing the compounds of the count. Whether or not the approaches subsequently utilized by Hoefle were the same as those conceived by him would not be relevant to whether Hoefle's conceived method was operative.
An interlocutory order is presumed to have been correct. The Board may consider whether an interlocutory order is manifestly erroneous or an abuse of discretion, and the burden of showing such shall be on the party attacking the order. 37 CFR 1.655(a).
We have reviewed the EIC's and the Board's orders. Contrary to the argument appearing on page 129 of Suh's opening brief, the requests accompanying the Suh motions are not "specific, relevant and material" to the Hoefle case-in-chief. Nor do they meet the established requirements at law for the reasons stated by the EIC and the Board in the aforesaid orders. Consequently, we hold that Suh has not sustained his burden to show that the orders are manifestly erroneous or an abuse of discretion.
*8 During his period for testimony-in-chief, Suh presented priority testimony to show a date for conception prior to Hoefle's date for conception coupled with diligence from just prior to Hoefle's date up to Suh's reduction to practice (actual or constructive). During his testimony period, Hoefle presented testimony to show a date for conception. In order to decide Suh's priority case, we must first determine Hoefle's date for conception. Accordingly, we will consider Hoefle's case first and then Suh's.
Hoefle presented an evidentiary record consisting of the testimony of nine witnesses together with 15 associated exhibits and seven cross exhibits. The testimony will be referred to as HR followed by its page number; each exhibit, as HX followed by its number; each cross exhibit, as HCX followed by its number. The witnesses testifying on behalf of Hoefle are Hoefle (also director of the cardiovascular section for chemistry) and Klutchko, the named inventors; Bennett, Blankley and Nicolaides, members of the cardiovascular group reporting to Hoefle; Kaplan, director of the cardiovascular section for biology; Capps, a research chemist sharing a lab with Nicolaides; Topliss, director of chemistry, to whom Hoefle reported; and Erickson, an expert organic chemist. The first eight witnesses were employed by or associated with Hoefle's assignee, Warner- Lambert, during the time period in question. Erickson, a professor of chemistry, testified as an expert witness.
According to the record, Warner-Lambert became interested in developing angiotensin converting enzyme (ACE) inhibitors, after the Squibb Company had developed Captopril, the first commercial ACE inhibitor. In April 1978, Warner-Lambert formed a group to develop ACE inhibitors. This group included, inter alia, Hoefle, Blankley, Bennett, and Klutchko, witnesses who testified here on behalf of Hoefle. Nicolaides, the head of the peptide group at Warner-Lambert, was later added to the ACE inhibitor group. HR 17, 29, 199 and 200.
The second (Blankley and Bennett were responsible therefor) concerned research with octahydroindole-2-carboxylic acid with a sulfur containing side chain. The third concerned a cooperative agreement with the Stanford Research Institute to develop ACE inhibitors which were ketomethylene analogs connected to an alanyl proline. HR 22, 23, 200, 207, 368, 369, 400 to 402 and 485 to 487.
*9 In June 1980, Hoefle, Klutchko and others in the antihypertensive group saw the program (HX 26) for the 17th National Medicinal Chemistry Symposium to be held at Rensselaer Polytechnic Institute in Troy, New York, and became aware that Merck company would make a presentation at 2:35 p.m. on June 18, 1980 concerning new developments in ACE inhibitors. The members also became aware through Dr. Kaplan that the Merck compound to be presented at the symposium would not have a sulfhydryl side chain. This caused a lot of excitement and much speculation concerning the Merck compound because the sulfhydryl side chain had been associated with unfavorable side effects. Both Hoefle and Klutchko discussed the Merck compound and speculated that if the Merck compound contained a proline moiety, they could modify the compound by replacing its proline moiety with a THIQ moiety. Bennett was aware of these speculations. Consequently, people from Warner-Lambert (Topliss, Kaplan and Lunney) and from the antihypertensive group (Bennett and Klutchko) planned to attend the meeting. Since Hoefle could not attend the meeting, he requested that Bennett telephone him after the Merck disclosure to inform him of the compound disclosed and its synthesis and activity. HR 22, 34 to 37, 205 to 207, 257 to 260, 326, 327, 371 to 373 and 400 to 402; HX 26.
Q. What is your recollection of what the structure of MK-421 was?
A. It was a proline, an acylated proline, it was acylated with what we call a side chain, it was a non-sulfhydryl side chain.
Q. Now, as a result of the disclosure, did you have any thoughts concerning it in connection with your own work or activities?
A. Well, yes. As soon as the structure was flashed, it just came to my mind that we could probably take our tetrahydroisoquinoline-3-carboxylic acid moiety and replace the proline and probably get a very good compound.
Q. Now, you mentioned Merck disclosed something about the synthesis, what can you recall that they disclosed about the synthesis of MK-421?
A. They showed how they took alanyl proline and ran a reductive alkylation with a keto Ester--they ran a reductive alkylation with a cyanoborohydride product.
Q. And what do you recall with respect to what Merck disclosed as to the activity of MK-421?
A. Well, it was a very active ACE inhibitor in vitro and in vivo and it lowered blood pressure in animals at this time, I'm pretty sure.
Q. Thank you. As a result of that, did you reach any beliefs as to whether or not the compound that you thought of, the tetrahydroisoquinoline with the MK-421 side chain, would be an active ACE inhibitor?
air of excitement of what had gone on and a recognition of the application of their [Merck's] revelation to our [Warner-Lambert's] program.
would use the synthetic procedure described by Merck, that these he believed would be applicable to making the tetrahydroisoquinoline-3- carboxylic acid analog and that this would--could probably be done in a month or two.
the chemistry really of tetrahydroisoquinoline-3-carboxylic acid would have similarities to a proline in that they could both be acylated similarly to get what would be equivalent to a dipeptide and then the reductive alkylation should give the final product.
HR 213 to 216, 264, 265, 331 to 335 and 496 to 498.
Q. In that conversation, did Hoefle say anything to you?
A. As previous discussions had taken place after MERCK'S disclosure at the meeting, we had a general discussion about the possibilities of taking our two lead compounds and attaching the MERCK side chain to them.
Q. An[d] again, what were those two lead compounds?
A. The octahydroindole and the tetrahydroisoquinoline.
Q. Now, after that telephone conversation on the evening of the 18th, what did you do next in connection with this?
A. I don't recall that I did anything specifically. I mean we already, you know, as soon as I knew the structure, I knew that what we wanted were the two analogs, the one octahydroindole and the other with the tetrahydroisoquinoline structures, and now there wasn't anything that could be done until I got back to the lab and could start work on it. It was immediately clear what we wanted.
On the following day, June 19, 1980, Hoefle spoke with Blankley and disclosed to him the structure of MK-421 and its similarity to captopril in ACE inhibition activity. They discussed modifying MK-421 by substituting THIQ for its proline moiety. Later in the afternoon, Hoefle spoke with Nicolaides and disclosed to him the structure of MK-421. He discussed with Nicolaides the synthesis of compounds with the new non-sulfhydryl side chain and several lead compounds and asked Nicolaides to write up a new inventive concept. HR 41 to 44, 378 to 381 and 429 to 431.
A. Well, I remember he was talking about putting the Merck side chain on some of their lead compound ACE inhibitors, but he only referred to the lead compounds by numbers rather than structures, and this was not uncommon. I guess I felt I knew what he was talking about at the time, that he was referring to the compounds that Syl Klutchko and Blankley and that group were engaged in looking at which would be octahydroindoles, quinolines or isoquinolines.
Ericson, an expert witness, testified with respect to the reaction route described in HX 27 for making the THQ compounds described therein and its applicability for making the corresponding THIQ compounds having the Merck side chain. He testified to the effect that a skilled chemist following the reactions steps set forth in HX 27 would be able to make the THIQ counterpart of the compound described at the bottom of page 114 and went through the methology by marking up a copy of page 115 (HX 27A). Ericson testified that to understand and carry out these reactions would require a Master's degree in chemistry or a Bachelor's degree with about three years bench experience. HR 560 to 578; HX 27, 27A and 32 to 36.
Before we can decide Hoefle's case for conception, we must determine whether HX 27 and 27A and all testimony associated therewith should be stricken (denied consideration) as requested in Suh's motion to suppress (Paper No. 202). The motion requests that we strike the exhibits because (i) the exhibits are outside of the scope of the count and (ii) counsel for Hoefle refused to permit counsel for Suh to inspect the "entirety of the original notebook source." The motion is denied for the reasons set forth in the Hoefle opposition (Paper No. 207).
*12 We do not consider that these arguments are well taken. In our view, HX 27 and 27A are entitled to consideration as they represent a record of Hoefle's conception. Evidence is not ordinarily stricken for alleged irrelevance which goes only to the weight to be accorded that evidence and does not constitute a basis for striking. Halbert v. Schuurs, 220 USPQ 558 (Bd.Pat.Int. 1983). Nor was Hoefle required under the rules to permit Suh's counsel to inspect the entirety of Nicolaides' notebook. Rather, Suh was only entitled to inspect originals of the exhibits relied upon and, according to Hoefle's opposition, Suh did so inspect pages 114 and 115.
We hold that the Hoefle record establishes conception on June 18, 1980.
Conception requires (1) the idea of the structure of the chemical compound, and (2) possession of an operative method of making it. Oka v. Youssefyeh, 849 F.2d 581, 7 USPQ2d 1169 (Fed.Cir.1988). The conception must be corroborated and the amount and quality of corroborative evidence is determined by a "rule of reason". Anderson v. Pieper, 442 F.2d 982, 169 USPQ 788 (CCPA 1971). Corroboration is not a ritual but a method for determining the veracity of the testimony. Corroboration can be supplied by the testimony of a witness other than the inventor. Mattor v. Coolegem, 530 F.2d 1391, 189 USPQ 201 (CCPA 1976).
For the foregoing reasons, we hold that the Hoefle record establishes conception on June 18, 1980.
up to Suh's actual reduction to practice on December 4, 1980 of an ACE inhibitor, designated USV 5269.
SR 64, 73, 81 to 87, 94 to 98, 1050, 1051, 2163 and 1264; SX 13, Rogers' Exhibit (ROG) 2 and 3, Belanger's Exhibit (BEL) 1, 2 and 4.
Q. Would it be fair to say that based on your experience as a chemist that it [SX7] would be millions of compounds?
Q. On pages 18 and 19, do you describe a chemical process for making the compounds disclosed thereon?
Q. At the time that you wrote down the disclosure on pages 18 and 19, did you extend consideration to a chemical process for making all of the compounds of compounds disclosed on pages 18 and 19?
Q. Have you since writing out the disclosure on pages 18 and 19 made an attempt to determine whether or not in fact all of the compounds encompassed by the disclosure of 18 and 19 can in fact be made?
Q. Since writing the disclosure on pages 18 and 19, have you extended any consideration to the number of different processes or processes steps that would be necessary to make all of the compounds disclosed on 18 and 19?
Q. Yes, you have given consideration to that subject?
Q. When did you give consideration to that?
A. I believe soon after I wrote this [sic] ideas. As I was writing this note, if I remember correctly, quite large number of compound [sic] that I conceived and expressed here can be prepared, however I also consider some of the additional literature work that required to execute some of the compounds which are difficult to prepare that may require additional literature search to select the best mode available.
Q. What, if any, specific literature did you have in mind back there in 1979?
A. My first choice is comprehensive chemical abstracts dating back from early 1900 to the present moment.
a structure falling within the scope of the count. The Suh record shows that Suh assigned Berstein to prepare a compound, later designated as USV 3772, the (d) form of USV 3753, and that the synthetic preparation of USV 3772 commenced in January of 1980 and was completed by March 17, 1980. The compound was reported to have no ACE activity. Thereafter, in April of 1980 Suh assigned to Berstein the task of preparing 2-indanyl analogs of USV 3753 and 3772. As of June 23, 1980 Berstein was unable to prepare these 2-indanyl analogs. SR 1808 to 1811, 2001, 2108, 2109; Habib Exhibit (HAB) 3 and 4.
Q. Do you have any recollection as to and now I'm limiting myself to prior to the date shown on the document, February 27, 1980, do you have any recollection of what it was that you and Regan spoke of in connection with S x 17?
A. I don't recall in detail, but we may have discussed general synthetic approaches.
Q. Do you recall what the general synthetic approaches were that you discussed?
Q. What do you recall about them generally?
A. In general regarding our target compounds and more applicable synthetic strategies that can be applied.
Q. When you say synthetic strategies that can be applied, you are referring to the methods of making these compounds that you just referred to?
Q. And when you refer to target compounds on S X 17, there's about three pages, roughly, containing various structural representations. Can you recall what groups of target compounds or types of target compounds the discussion with Regan had to do with?
A. To the best of my knowledge, it was more to the general method, not to any specific structures that are within the context of this Exhibit 17.
Q. In looking at Suh Exhibit 17, can we agree that the exhibit itself does not set forth any synthetic methods for the preparation of any of these types of compounds?
Concerning SKI 2, Skiles testified that it encompasses millions of compounds and that at the time he was not positive that he could make every one of the compounds described in the exhibit. SR 202, 2050 and 2051; SX 18 and SKI 2.
Q. What specifically in S X 18 do you believe you shared with Dr. Regan?
A. I believe I probably discussed with him regarding some synthetic strategies.
*15 Q. When you say synthetic strategies, do you mean methods of preparation?
Q. Do you remember what specific groups of compounds that was in reference to?
A. Only in general term, N involving heterocyclic systems.
Q. Do you have a recollection as to what specific heterocyclic system you discussed with him?
A. I do not really recall exactly but to the best of my knowledge, we may have discussed heterocyclic system that containing [sic] nitrogen.
Q. Does your understanding of S X 18 set forth any processes for the preparation of the groups of compounds contained therein?
Q. Is it your recollection that with respect to Dr. Regan you brought the structures to his attention and then you asked him questions concerning methods for synthesizing certain of them?
Q. Then would you tell me what your best recollection is as to what happened between you and Dr. Regan in that connection?
A. It is a synthetic term of preparing substituted heterocyclic dipeptides in very general term.
Q. Did you bring up the discussion or did he raise the matter with you?
A. I think I initiated it.
Q. Do you have a recollection of him making any specific suggestions to you which you or Dr. Skiles incorporate in what became the party Suh, et al., Exhibit 18?
Q. I understand he might have made a specific suggestion. Can you be more definitive or more precise?
A. May I ask the time frame of the question?
Q. Yes. We are talking about prior to April 3, 1980.
A. I believe discussion was more in general term of synthetic approaches because it is a lot of structures but from trained chemist's eye, it is classified as substituted di, tripeptides which are reasonably well familiarized by most trained chemists who are senior level under my staff.
We hold that Suh's record does not establish conception prior to June 18, 1980, Hoefle's date for conception.
Conception requires (1) the idea of the structure of the chemical compound, and (2) possession of an operative method of making it. Oka v. Youssefyeh, supra.
We agree with Suh that by April 3, 1980, SX 17 and 18 show that the Suh inventors possessed amidst the millions of compounds disclosed therein the structure of tetrahydroisoqinoline compounds falling within the scope of the count in issue. However, we do not agree with Suh that his record establishes possession of an operative method of making these tetrahydroisoquinoline compounds.
*16 Further it is Suh's position at page 79 of the brief that possession of an operative method of making the compounds of the count is shown by the successful preparation of lead compounds, i.e., USV 3753 and 3772, by synthetic routes known as reductive alkylation.
When, as is often the case, a method of making a compound with conventional techniques is a matter of routine knowledge among those skilled in the art, a compound has been deemed to have been conceived when it was described, and the question of whether the conceiver was in possession of a method of making it is simply not raised.
In this case, the testimony of the Suh inventors shows that the method of preparing the compounds of the count is not a matter of routine knowledge, thus raising the question of whether the Suh inventors possessed at the time Suh wrote out the various structures an operative method of making the compounds of the count. The testimony of Suh and Skiles makes clear that each exhibit, SX 7, 17 and 18, describes millions of compounds [FN7] falling within different classes. Suh's testimony concerning the period of time from March 26, 1979 up to June 18, 1980, the date of Hoefle's conception, evinces no knowledge of a method of making the tetrahydroisoquinoline compounds described in these exhibits. Suh's testimony is to the effect that he "may have discussed general synthetic approaches" with others, that he does not recall those approaches in detail, that to make the compounds of these exhibits would require a number of processes or process steps and that it would require additional literature search to make some of the compounds which are difficult to prepare. Nowhere did Suh testify in the record before us that he knew a particular method of making the compounds of the count. Nor did Suh testify that he made, or had made on his behalf, any literature searches to determine such a method. Under these circumstances, we cannot presume that the structural description of the broad class of hydroisoquinolines in SX 7, 17 and 18 is sufficient to put the Suh inventors in possession of a method of making them.
Nor do we agree with Suh that the possession of an operative method of making the cyclopentyl compounds, i.e., USV 3753 and 3772, which fall within the scope of the "millions" of compounds described in SX 7, 17 and 18, shows that the Suh inventors possessed an operative method of making the hydroisoquinoline compounds described in the aforesaid exhibits. Since USV 3753 and 3772 are not compounds falling within the scope of the count, the possession of an operative method of making them does not equate to the possession of an operative method of making a compound within the scope of the count. In fact, Suh possessed no method of making a compound within the scope of the count. Further, these exhibits describe distinct classes of compounds, including the 2-indanyl compounds which are separately patentable, having been described and claimed in another application. See Oka at 1172. Also these exhibits describe numerous complex compounds, requiring various complex processes to make them. The complexity of these processes is demonstrated by the fact that at no time prior to Hoefle's conception date of June 18, 1980, did Suh possess an operable method of making the 2-indanyl compounds described in exhibits SX 7 and 17, as held by the Court in Oka v. Youssefyeh, supra, and as shown by Berstein's testimony at SR 1811. Consequently, Suh cannot rely on the successful preparation of the cyclopentyl compounds, which are outside of the count and his involved application disclosure, as showing an operable method of preparing the compounds of the count.
*17 For the foregoing reasons, we hold that Suh has not sustained his burden of proof to show conception at a date prior to Hoefle's June 18, 1980 conception date.
Assuming that the Suh record establishes conception of the subject matter of the count, which it does not, then we hold that the Suh record does not establish diligence just prior to Hoefle's entry into the field.
Mr. Berstein commenced preparation of this compound L-alanyl-N(2- indanyl)glycine in April of 1980 and continued these efforts through (at least) the end of June 1980. SUH R. 1808-1809. These early research efforts are reported in the June Monthly Report of Dr. Suh and Mr. Bertesin. SUH R. 1809-1811; BER EX. 1.
Citing Ginos v. Nedelec, 220 USPQ 831 (Bd.Pat.Int. 1983) and Bev v. Kollonitsch, 806 F.2d 1024, 231 USPQ 967 (Fed.Cir.1986), the brief contends that the Suh inventors may rely upon Berstein's work on the 2-indanyl and cyclopentyl derivatives. The brief recognizes that these derivatives "are not found precisely within the count of this interference" but urges that they are compounds "related in structure and intended utility and embraced by the generic concept proposed by Dr. Suh as early as February 27, 1980."
In our view, Suh cannot rely on work with respect to either the 2-indanyl or the cyclopentyl derivatives as diligence for the reduction to practice of the invention of the count because neither is within the scope of the count in issue. Under certain circumstances, a party may rely upon work on another compound outside of the scope of a count as diligence towards the reduction to practice of the count provided that the other compound is a part of the party's invention and is disclosed in the party's application. Ginos v. Nedelec, 220 USPQ 831 (Bd.Pat.Int. 1983). In this case, neither the 2-indanyl nor the cyclopentyl derivative is disclosed in Suh's involved application. Consequently, Suh's reliance upon Ginos is misplaced. Nor is Bev v. Kollonitsch, supra, apposite. Bev is concerned with attorney diligence directed to the preparation of a patent application, a different matter from diligence directed to an actual reduction to practice.
Assuming that Suh could rely on work with respect to both the 2-indanyl and the cyclopentyl derivatives as diligence towards the reduction to practice of the invention of the count, which he cannot, then Berstein's testimony does not show that Suh was diligent just prior to June 18, 1980, Hoefle's date of conception. Berstein's testimony is of a general nature and is not specific as to dates and facts. Cf. Gould v. Schawlow, 363 F.2d 908, 150 USPQ 634 (CCPA 1966); Kendall v. Searles, 173 F.2d 986, 81 USPQ 363 (CCPA 1949). In this regard, Berstein testified that "as early as March, 1980" he had "successfully prepared the compound d-alanyl-N-(cyclopentyl)glycine (USV 3772)" and confirmed its structure on March 17, 1980 by elemental analysis, that "as early as April, 1980" he commenced work on N-2-indanyl derivatives and that he was present during the period from June 17 to 20, 1980, at the symposium held at Rensselaer Polytechnic Institute where Merck made its disclosure of MK-421. SR 1808 to 1810. Nor does this testimony show any diligence just prior to Hoefle's conception date. Evidence of work taking place at least a month prior to the date of an opponent's entry into the field does not constitute diligence just prior to that date. Cf. Rieser v. Williams, 255 F.2d 419, 118 USPQ 96 (CCPA 1958). Nor would Berstein's presence during the period from June 17 to 20, 1980, at the symposium held at Rensselaer Polytechnic Institute constitute diligence towards the reduction to practice of this invention.
*18 For the foregoing reasons, we hold that Suh has not established diligence immediately just prior to Hoefle's entry into the field.
In view of our holdings, we need not consider the remaining Suh evidence and the Hoefle motion to suppress.
Hoefle et al. are entitled to a patent containing their claims 1 to 4, 14 and 15 corresponding to the count.
FN1. Suh's motion is Paper No. 202; Hoefle's, Paper No. 208.
FN2. The Hoefle brief [page 92, note 69] acknowledges the PTO policy and states that the issue was raised merely to preserve Hoefle's right to seek its resolution before another tribunal.
FN3. While urging that the subject matter is unpatentable to his opponent Hoefle, Suh maintains that it is patentable to him for he did not recognize any relationship between the prior art patents and the Merck disclosure. Apparently, it is Suh's position that although his inventors may not have been as perceptive as the Hoefle inventors, we should penalize Hoefle for recognizing this relationship and conversely reward Suh for not recognizing it. Suh's inconsistent position is no more than a cheap shot at an otherwise patentable invention.
FN4. We have designated the sulfhydryl side chain and the proline moiety.
FN5. We have designated the Merck side chain and the proline moiety.
FN6. It could be argued that faith should not be placed upon these witnesses' recollections because they testified as to events which had occurred some eight years earlier. Cf. D'Amico v. Tilles, 167 USPQ 176 (Bd.Pat.Int. 1969). In this case, we note that the witnesses' memories were refreshed by independent evidence, i.e., the program (HX 26) for the medicinal symposium and the general excitement at the time period of the impending Merck disclosure of a new non-sulfhydryl containing ACE compound, testified to by the inventors and the corroborating witnesses.
FN7. The Hoefle main brief at page 60 states that these exhibits encompass 400 billion compounds. The Suh reply brief at page 12 does not dispute this.


text:
Law Web: Whether one of cause of action for eviction of tenant which was given up can be revived?
Whether one of cause of action for eviction of tenant which was given up can be revived?
Applying the aforesaid principles laid down by the Privy Council we find that none of the conditions mentioned by the Privy Council are applicable in this case. The plaintiff had first based her suit on three distinct causes of action but later confined the suit only to the first cause of action, namely, the one mentioned in Section 14A(1) of the Act and gave up the cause of action relating to Section 14(1)(e) and (f). Subsequently, by virtue of an amendment she relinquished the first cause of action arising out of Section 14A(1) and sought to revive her cause of action based on Section 14(1)(e). At the time when the plaintiff relinquished the cause of action arising out of Section 14(1)(e) the defendant was not in the picture at all. Therefore, it was not open to the defendant to raise any objection to the amendment sought by the plaintiff. For these reasons, we are satisfied that the second amendment application was not barred by the principles of Order 2 Rule 2 C.P.C. and the contention of the learned Counsel for the appellant must fail.
8. Secondly, as regards the question of constructive res judicata it has no application whatsoever in the instant case. It is well settled that one of the essential conditions of res judicata is that there must be a formal adjudication between the parties after full hearing. In other words, the matter must be finally decided between the parties. Here also at a time when the plaintiff relinquished her first cause of action the defendant was no where in the picture, and there being no adjudication between the parties the doctrine of res judicata does not apply.
A.N. Sen, P.S. Kailasam and S. Murtaza Fazal Ali, JJ.
1. This appeal by Special leave is directed against the judgment and order of the Delhi High Court dated the 6th April, 1978 dismissing the revision petition filed by the appellant against an order of the Rent Controller. For the purpose of brevity and to avoid confusion the appellant shall hereafter be referred to as the Defendant and the respondent as the Plaintiff.
2. The defendant appellant was inducted as a tenant by the plaintiff in Quarter No. IV-H/46, Lajpat Nagar, New Delhi on 1-7-1967. On 2nd June, 1976 the plaintiff filed an application under Sections 14A(1), 14(1)(e) and 14(1)(f) of the Delhi Rent Control Act, hereinafter referred to as the Act, for eviction of the tenant firstly on the ground that as the husband of tie plaintiff was required by the Government to vacate the Government quarter or pay the penal rent the husband of the plaintiff had to shift to the house of his wife which was in the tenancy of the defendant. A prayer was also made by the plaintiff that even otherwise the premises were required for a bonafide necessity of the land-lady and also as the premises had become unfit for human habitation the plaintiff required the same for carrying out repairs which could not be done unless the premises were vacated. On the next date, that is on 3rd June, 1976 the plaintiff filed an application withdrawing the cause of action mentioned by her regarding bonafide necessity and repairs as contemplated by Sections 14(1)(e) and 14(11)(f) of the Act. The defendant appellant at this time was nowhere in the picture and no notice had yet been served on him. The Rent Controller accordingly allowed the plaintiff to withdraw the two Causes of action mentioned in the application. Thereafter notice was issued to the defendant. On the 4th June, 1976 the plaintiff again sought to amend her petition by deleting the cause of action mentioned under Section 14-A(1) of the Act, that is to say requirement of the plaintiff because her husband had been directed to vacate the Government quarter. This was perhaps necessitated because there were some amendments in the Government Rules on the subject. On the 13th August, 1976 the defendant appeared before the Rent Controller and filed an application under Section 25B Sub-sections 4 and 5 requesting the Rent Controller to give the defendant permission to defend the suit, on the ground that as the land-lady was not a Government servant she was not entitled to maintain the eviction petition under Section 14A(1) of the Act. The defendant also raised some other contentions. On 6-10-1976 the husband of the plaintiff filed an application for being impleaded as a party, but this application was rejected on 22-11-1976. The plaintiff thereafter again filed another application on 27-1-1977 praying for amendment of her eviction application by reinserting the cause of action contained in Section 14(1)(e) of the Act and sought to claim eviction on the ground of bonafide requirement. This application was contested by the defendant but was allowed by the Rent Controller by his order dated 19-2-1977. The Rent Controller however left it open to the defendant to file his objection by a fresh application if he wanted to defend the suit. The defendant accordingly filed an application on the 9th March, 1977 for permission to defend the suit on the ground that the amendment sought for by the plaintiff was uncalled for and illegal and could not be allowed. Ultimately the Rent Controller by his order dated 27th July, 1977 rejected the application of the defendant for leave to appear and defend the suit and passed an order evicting the defendant from the premises. Being aggrieved by this order the defendant went up in revision to the Delhi High Court as no appeal or second appeal against the order passed by the Rent Controller was maintainable under Sub-section, 8 of Section 25B of the Act. The revision petition was heard by Justice Prakash Narain of the Delhi High Court who by his order dated 6th April, 1978 dismissed the revision petition with costs. Thereafter, the petitioner approached this Court and obtained special leave. Hence this appeal.
3. On a perusal of the judgment of the Rent Controller and that of the High Court prima jade it seems to us that the appeal was clearly concluded by findings of fact inasmuch as both the Courts had found that the plaintiff had proved that she required the premises for her bonafide necessity. learned Counsel for the appellant, however, raised three points of law before us. In the first place, it was argued that the second application given by the plaintiff for re-amending her plaint by inserting the relief under Section 14(1)(e) which she had given up at a prior occasion when she had based her suit under Section 14A(1) was barred by the principles of Order 2 Rule 2 of the CPC.
4. It was next contended that even if Order 2 Rule 2 C.P.C. had no application, the second application for amendment filed by the plaintiff was barred by the doctrine of constructive res judicata. Finally, it was argued that Section 256 which lays down the procedure for disposing of applications filed by the landlord under the provisions of Sections 14A and 14(1)(e) are violative of Article 14 of the Constitution inasmuch as the provisions are arbitrary and discriminatory in nature, and seek to provide two different procedures for tenant similarly situate.
2 (1) Every suit shall include the whole of the claim which the plaintiff is entitled to make in respect of the cause of action but a plaintiff may relinquish any portion of his claim in order to bring the suit within the jurisdiction of any Court.
(2) Where a plaintiff omits to sue in respect of, or intentionally re inquishes, any portion of his claim, he shall not afterwards sue in respect of the portion so omitted or relinquished.
A perusal of Order 2 Rule 2 would clearly reveal that this provision applies to cases where a plaintiff omits to sue a portion of the cause of action' on which the suit is based either by relinquishing the cause of action or by omitting a part of it. The provision has, therefore, no application to cases where the plaintiff basis his suit on separate and distinct causes of action and chooses to relinquish one or the other of them. In such cases, it is always open to the plaintiff to file a fresh suit on the basis of a distinct cause of action which he may have relinquished.
That the right and its infringement and not the ground or origin of the right and its infringement, constitute the cause of action, out the cause of action for the Oudh suit (No. 8 of 1928) so far as the Mahbub brothers are concerned was only a denial of title by them as that suit was mainly against Abadi Begum for possession of the Oudh property; whilst in the present suit the cause of action was wrongful possession by the Mahbub brothers of the Shahjahanpur property, and that the two causes of action were thus different.
Their Lordships are satisfied that there is no force in the contention that the plaintiffs in the present suit could not reasonably commence an action in respect of the Shahjahanpur property while their right to mutation in the Revenue registers was the subject of an appeal to the Commissioner which had not been decided, or, in other words, that it was not open to them to sue the defendants in respect of the Shahjahanpur property at a date earlier than October 29, 1928 and to include the Shahjahanpur property in the earlier suit No. 8 instituted on September 14, 1928.
The principles laid down in the cases thus far discussed may be thus summarized; (1) the correct test in cases falling under Order 2. Rule 2 is "whether the claim in the new suit is, in fact, founded on a cause of action distinct from that which was the foundation for the former suit. Moonshee Buzloor Ruheem v. Shamsoonnissa Begum 11 M.I.A. 551. (2) The cause of action means every fact which will be necessary for the plain- tiff to prove, if traversed, in order to support his right to the judgment Read v. Brown 22 Q.B.D. 128. (3) If the evidence] to support the two claims is different then the causes of action are also different Brunsden v. Humphery 14 Q.b.d. 141. (4) The causes of action in the two suits may be considered to be the same if in substance they are identical. (Brunsden v. Humphery). (5) The cause of action has no relation whatsoever to the defence that may be set up by the defendant, nor does it depend on the character of the relief prayed for "by the plaintiff. It refers "to the media upon which the plaintiff askes the court to arrives at a conclusion in his favour;" Muss. Chand Kour v. Partab Singh(4) .This observation was made by Lord Watson in a case under Section 43 of the Act of 1882 (corresponding to Order 2. Rule 2) where plaintiff made various claims in the same suit.
7. Applying the aforesaid principles laid down by the Privy Council we find that none of the conditions mentioned by the Privy Council are applicable in this case. The plaintiff had first based her suit on three distinct causes of action but later confined the suit only to the first cause of action, namely, the one mentioned in Section 14A(1) of the Act and gave up the cause of action relating to Section 14(1)(e) and (f). Subsequently, by virtue of an amendment she relinquished the first cause of action arising out of Section 14A(1) and sought to revive her cause of action based on Section 14(1)(e). At the time when the plaintiff relinquished the cause of action arising out of Section 14(1)(e) the defendant was not in the picture at all. Therefore, it was not open to the defendant to raise any objection to the amendment sought by the plaintiff. For these reasons, we are satisfied that the second amendment application was not barred by the principles of Order 2 Rule 2 C.P.C. and the contention of the learned Counsel for the appellant must fail.
The second amendment application was made in the same proceedings on a cause of action that she was allowed to insert with the permission of the court. Although both the parties went to the court on the basis of these facts, neither the bar of res judicata nor that of Order 2 Rule 2 appear to have been raised before the Rent Controller. For these reasons, therefore, the second plank of the argument put forward by counsel for the appellant also must be rejected.
9. Lastly, we come to the question of the application of Article 14 to the provisions of the Act. This is undoubtedly a question which merits serious consideration. Before approaching this question we might observe that it is well settled that what Article 14 forbids is hostile discrimination and not reasonable classification. Discrimination may take place in many ways, and what Article 14 requires is that equals must be treated alike. If equals and unequals are also treated alike then also Article 14 is clearly attracted and discrimination results. A reasonable classification based on grounds having a clear nexus with the objective to be achieved and grouping certain persons in a separate category in view of their special peculiarities is undoubtedly permissible. Of course, classification should not be purely a class legislation. It is also well settled that there is always a presumption in favour of the constitutionality of a statute and any party who seeks to challenge the legislation on the ground of applicability of Article 14 must plead and prove the necessary facts. In making a classification the court must presumed matters of common knowledge, common report, history of the time and every other relevant fact.
The legislature undoubtedly has a wide field of choice in determining and classifying the subject of its laws, and if the law deals alike with all of a certain class, it is normally not obnoxious to the charge of denial of equal protection; but the classification should never be arbitrary. It must always rest upon some real and substantial distinction bearing a reasonable and just relation to the things in respect to which the classification is made; and classification made without any substantial basis should be regarded as invalid.
Same view was taken in the case of The State of West Bengal v. Anwar Ali Sarkar MANU/SC/0033/1952 : 1952CriLJ510 .
11. In the case of Shri Ram Krishna Dalmia v. Shri Justice S.R. Tendolkar and Ors. MANU/SC/0024/1958 : 1SCR279 it was held that in determining whether there is any intelligible differentia on the basis of which the petitioners and their companies could have been grouped together it is permissible to look to the facts appearing in the notification as also those brought to the notice of the court.
12. In the case of Mahant Moti Das v. S.P. Sahi, The Special Officer in charge of Hindu Religious Trusts and Ors.  2 Supp. S. C. R. 563 this Court held that apart from there being a presumption in favour of the constitutionality of an enactment the burden is upon the party who alleges that there has been a clear transgression of the constitutional guarantee. It was further pointed out that the legislature correctly appreciated the needs of its own people and that its laws are directed to problems made manifest by experience and that any discrimination made are based on adequate grounds as the legislature is free to recognise degrees of harm and may confine its restrictions to those cases where the need is deemed to be the clearest.
13. These observations clearly justify the classification made by the legislature in enacting the Delhi Rent Control Act as we shall show later.
15. In the light of the principles enunciated" by the decisions of this Court we would now briefly approach the relevant provisions of the Delhi Rent Control Act which have been applied to the facts of the present case.
16. To begin with, it is not necessary for Us to deal with Section 14A(1) because the cause of action contained in this Section has been given up by the plaintiff-respondent. We would, therefore confine ourselves to the validity of Section 14(1)(e) and the procedure prescribed to give relief mentioned in the aforesaid Section in Section 25B.
Before discussing the relevant provisions of the Act it may be necessary to observe that the Rent Control Act is a piece of social legislation and is meant mainly to protect the tenants from frivolous evictions. At the same time, in order to do justice to the landlords and to avoid placing such restrictions on their right to evict the tenant as to destroy their legal right to property certain salutary provisions have been made by the legislature which give relief to the landlord. In the absence of such a legislation a landlord has a common law right to evict the tenant either on the determination of the tenancy by efflux of time or for default in payment of rent or other grounds after giving notice under the Transfer of Property Act. This broad right has been curtailed by the Rent Control Legislation with a view to give protection to the tenants having regard to their genuine and dire needs. While the rent control legislation has given a number of facilities to the tenants it should not be construed so as to destroy the limited relief which it seeks to give to the landlord also.
Moreover, Section 11(h) of the Act uses the words reasonable 'requirement' which undoubtedly postulate that there must be an element of need as opposed to a mere desire or wish. The distinction between desire and need Should doubtless be kept in mind but not so as to make even the genuine need as nothing but a desire as the High Court has done in this case. It seems to us that the connotation of the term 'need' or 'requirement' should not be artificially extended nor its language so unduly stretched or strained as to make it impossible or extremely difficult for the landlord to get a degree for eviction. Such a course would defeat the very purpose of the Act which affords the facility of eviction of the tenant to the landlord on certain specified grounds. This appears to us to be the general scheme of all the Rent Control Acts prevalent in other States in the country. this Court has considered the import of the word 'requirement' and pointed out that it merely connotes that there should be an element of need.
There has been a persistent demand for amendments to the Delhi Rent Control Act, 1958 with a view to conferring, a right of tenancy on certain heirs/successors of a deceased statutory tenant so that they may be protected from eviction by landlords and also for simplifying the procedure for eviction of tenants in case the landlord requires the premises bona fide for his personal occupation. Further, Government decided on the 9th September, 1975 that a person who owns his own house in his place of work should vacate the Government accommodation allotted to him before the 31st December, 1975. Government considered that in the circumstances, the Act requires to be amended urgently.
As the Parliament was not in session the Delhi Rent Control (Amendment) Ordinance 1975 was promulgated on the 1st December, 1975. The Bill seeks to replace the said Ordinance.
25.B (1) Every application by a landlord for the recovery of possession of any premises on the ground specified in Clause (e) of the proviso to Sub-section (1) of Section 14, or under Section 14A, shall be dealt with in accordance with the procedure specified in this Section.
(2) The Controller shall, issue summons, in relation to every application referred in Sub-Section (1) in the form specified in the Third Schedule.
(3) (a) The Controller shall, in addition to, and simultaneously with, the issue of summons for service on the tenant also direct the summons to be served by registered post, acknowledgement due. addressed to the tenant or his agent empowered to accept the service at the place where the tenant or his agent actually and voluntarily resides or carries on business or personally works for gain and may, if the circumstances of the case so require, also direct the publication of the summons in a newspaper circulating in the locality in which the tenant is last known to have resided or carried on business or personally worked for gain.
(b) When an acknowledgement purporting to be signed by the tenant or his agent is received by the Controller or the registered article containing the summons is received back with an endorsement purporting to have been made by a postal employee to the effect that the tenant or his agent had refused to take delivery of the registered article, the Controller may declare that there has: been a valid service of summons.
(4) The tenant on whom the summons is duly served, (whether in the ordinary way or by registered post) in the form specified in the Third Schedule shall not contest the prayer for eviction from the premises unless he files an affidavit stating the grounds on which he seeks to contest the application for eviction and obtains leave from the Controller as hereinafter provided; and in default of his appearance in pursuance of the summons or his obtaining such leave, the statement made by the landlord in the application for eviction shall be deemed to be admitted by the tenant and , the applicant shall be entitled to an order for eviction on the ground aforesaid.
(5) The Controller shall give to the tenant leave to contest the application if the affidavit filed by the tenant discloses such facts as would disentitle the landlord from obtaining an order for the recovery of possession of the premises on the ground specified in Clause (e) of the proviso to Sub-section (1) of Section 14 or under Section 14A.
(6) Where leave is granted to the tenant to contest the application, the Controller shall commence the hearing of the application as early as practicable.
(7) Notwithstanding anything contained in Sub-section (2) of Section 37, the Controller shall, while holding an inquiry in a proceeding to which this Chapter applies, follow the practice and procedure of a Court of Small Causes, including the recording of evidence.
(9) Where no application has been made to the High Court on revision, the Controller may exercise the powers of review in accordance with the provisions of Order XLVII of the First Schedule to the CPC, 1908.
(10) Save as otherwise provided in this Chapter, the procedure for the disposal of an application for eviction on the ground specified in Clause (e) of the proviso to Sub-Section (1) of Section 14, or under Section 14A, shall be the same as the procedure for the disposal of applications by Controllers.
18. The comments by the learned Counsel for the appellant are first that there was no reason to discriminate the landlord suing for personal necessity by trying his application in a summary fashion. We have already pointed out that the classification made by Section 25B is a reasonable classification and cannot be said to be in any way discriminatory or arbitrary. Even though a summary procedure has been evolved the tenant has been afforded full opportunity to defend the application provided he can disclose good grounds for negativing the case of the landlord. No litigant has a right to protract the legal proceedings by taking frivolous, irrelevant, irrational or uncalled for pleas. This is what the Section seeks to prevent.
19. It was then argued by counsel for the appellant that where an application has been allowed for eviction of the tenant, no appeal or second appeal is provided by the Act. An appeal is purely a creature of the statute and this right has not been given in order to cut out unnecessary delay. Instead the highest Court of the State has been given a wide power of revision where the said Court can examine the case of the tenant and the landlord and the validity of the order passed by the Controller. The right of the tenant, therefore, is sufficiently safeguarded by the proviso to Sub-section (8) of Section 25B of the Act referred to above. In order to give relief to the tenant against any apparent error of law or fact where no revision has been filed in the High Court the statute confers power of review on the Controller.
20. Thus taking ah overall picture of the situation, the circumstances under which the landlord's needs have been classified and the safeguards given by the statute it cannot be said by any stretch of imagination that Section 25B and its Sub-sections are violative of Article 14 of the Constitution of India, or that Section 25B suffers from the vice of excessive delegation of powers. In fact Section 25B contains valuable and sufficient guidelines which completely exclude the exercise of uncanalised or arbitrary powers by the Rent Controller. As discussed above the rights of the tenants are sufficiently protected. for instance if the tenant presents a plausible defence the plaintiff can be non suited if the defence is accepted by the Controller. The tenant however cannot claim a legal light to take all sorts of frivolous, baseless or irrelevant pleas which alone the statute bars. We have already indicated that summary procedure relates only to a particular ground on the basis of which the landlord can seek eviction and does not apply to other grounds on which the tenant can be evicted.
21. There is yet another important aspect of the matter which may be mentioned here. Prior to the enactment of the Rent Control legislation in our country, the relationship of landlord and tenant was governed by our common law viz. the Transfer of Property Act (Sections 107 to 111). The tenant was inducted with this tacit agreement to be regulated by the conditions embodied in the contract and could not be allowed to repudiate the agreement reached between him and the landlord during that period. The tenant was, therefore, bound in law to vacate the premises either voluntarily or through a suit after he was given a notice as required by the Transfer of Property Act under the terms and conditions of the lease. However, as a piece of social reform in order to protect the tenants from capricious and frivolous eviction, the legislature stepped in and afforded special protection to the tenant by conferring on him the status of a statutory tenant who could not be evicted except under the conditions specified and the procedure prescribed by the Rent Control Acts. Thus to this extent, the agreement of lease and the provisions of the Transfer of Property Act stood superseded. At the same time, the Rent Control Acts provided the facilities of eviction to the landlord on certain specified grounds like bona fide personal necessity or default in payment of rent etc. Thus any right that the tenant possessed after the expiry of the lease was conferred on him only by virtue of the Rent Control Act. It is, therefore, manifest that if the legislature considered in its wisdom to confer certain rights or facilities on the tenants. it could due to changed circumstances curtail, modify, alter or even take away such rights or the procedure enacted for the purpose of eviction and leave the tenants to seek their remedy under the common law.
22. Thus, we do not see how can the tenant challenge the validity of such a provision enacted by the legislature from which the tenant itself derived such rights.
23. In the instant case, the legislature has not taken away the right of the tenant at all but has merely simplified the procedure for eviction of the tenant in cases falling within the ambit of Sections 14A and 14(1)(e) of the Act as discussed in the judgment. In these circumstances, therefore, any challenge by the tenant to the constitutionality of the Act must necessarily fail and hence Section 25B is constitutionally valid.
24. For these reasons, therefore, all the contentions raised by the appellant fail and the appeal is dismissed. But In the peculiar circumstances of the case there will be no order as to costs. Time till 31-5-1980 is given to the tenant to hand over peaceful and vacant possession to the landlord on filing an undertaking to this Court within a month accompanied by an affidavit that he would do so on the date fixed and shall not induct any other person on the premises. The tenant will, during this period, continue to pay the compensation for wrongful use of the premises equivalent to the amount of the rent and arrears.

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Ch 335 Stop and Yield Intersections, Railroad Crossings, Etc.
§ 605.030 Soliciting A Residence Without Invitation.
§ 605.040 Validity Of Permit.
§ 605.050 "No Visit" List.
§ 605.080 Ice Cream Truck Additional Regulations.
§ 605.090 Permit — Not An Endorsement.
§ 605.100 Denial — Administrative Revocation — Hearing.
§ 605.130 Violation To Be Prosecuted In Municipal Court.
§ 605.190 Purpose And Definitions.
§ 605.200 Food Truck Permit.
§ 605.230 Hearing Upon Suspension Or Revocation Of Food Truck Permit.
Section 605.030 Soliciting A Residence Without Invitation.
Section 605.040 Validity Of Permit.
Section 605.050 "No Visit" List.
Section 605.080 Ice Cream Truck Additional Regulations.
Section 605.090 Permit — Not An Endorsement.
Section 605.100 Denial — Administrative Revocation — Hearing.
Section 605.130 Violation To Be Prosecuted In Municipal Court.
Section 605.190 Purpose And Definitions.
Section 605.200 Food Truck Permit.
Section 605.230 Hearing Upon Suspension Or Revocation Of Food Truck Permit.
Attempting to obtain a donation to a particular purpose, including, but not limited to the following: education, philanthropy, charity, religion, philosophy, ideology, or political party, issue, or candidate.
A Person traveling by foot, automobile, motor truck, or any type of conveyance from house to house, place to place, or street to street, who attempts to make personal contact with another Person without prior specific invitation or appointment from such Person for the primary purpose of attempting to sell goods, wares, merchandise, or services with minimal or no delay.
Shall extend and be applied to associations, corporations, firms, partnerships, and bodies politic and corporate as well as to individuals and agents of same.
Any actions taken by a Solicitor or a Peddler.
Taking or attempting to take orders for the sale of goods, wares, merchandise, and/or services.
Editor's Note: Former Chapter 605, Peddlers, Solicitors And Canvassers, containing Sections 605.010 through 605.180, was repealed 5-24-2018 by Ord. No. 3814.
This Article shall not apply to a Federal, State, or local government employee or a public utility employee in the performance of his/her duty for his/her employer.
Permit Required. Unless a permit is obtained by the company and each participating individual Solicitor or Peddler, it shall be unlawful for any Solicitor or Peddler to go in and upon any private residence in the City not having been requested or invited to do so by the owner or occupant of such residence. No permit issued under this Article is transferrable.
A Canvasser is not required to obtain a permit.
The application for and issuance of a permit shall be done in accordance with and subject to the following City permitting requirements.
A copy of the registration number issued by the State of Missouri for charitable solicitations, if applicable.
Following the submission of a complete application to the City and payment of a five dollars ($5.00) application fee, the City shall investigate as to the truth and accuracy of the information contained in the application. Upon completion of such investigation and if the application meets all requirements of this Article, the City Clerk shall issue the permit within a reasonable time, not to exceed thirty (30) days, and in accordance with applicable law. If the City has not completed this investigation within a reasonable time, not to exceed thirty (30) days, and in accordance with applicable law, the permit will nonetheless be issued, subject, however, to administrative revocation upon completion of the investigation.
In accordance with Section 605.040.
The applicant shall be notified that the permit will not be issued and the reason for the same.
No individual may be granted more than one (1) Permit within a four-month period with each Permit being valid for a period of no longer than two (2) days.
No individual Soliciting on behalf of a Person may receive a Permit for purposes of Soliciting if other individuals have been issued Permits within the previous four (4) months for Soliciting on behalf of the same Person.
The City Clerk shall maintain a list of persons within the City who restrict visits to their property (including their leasehold, in the case of a tenant) by Peddlers, Solicitors, and Canvassers. The City Clerk may provide a form to assist property owners and tenants, and this form may allow the property owners and tenants to select certain types of visits they find acceptable while refusing permission to others. This "no visit" list shall be a public document, reproduced on the City's web site and available for public inspection and copying. A copy of the "no visit" list shall be provided to each applicant for, and each recipient of, a permit. It will be the responsibility of that Canvasser to obtain in some other way a copy of the current "no visit" list. In addition, to restrict visits to their property, property owners and tenants may also choose to post a sign of the type described in Section 605.070.
No Solicitor, Canvasser, or Peddler shall operate in or on any right-of-way, sidewalk, or street corner, whether public or private, in such a manner as to endanger himself or others or so as to impede traffic. The judgment of a Police Officer, exercising good faith, shall be conclusive as to whether public safety is jeopardized or traffic impeded. For purposes of promoting public safety, a Peddler, Solicitor, or Canvasser wishing to operate within a right-of-way or street may only operate on the median or raised island and must remain thereon unless summoned by the Person solicited.
The individual Soliciting shall wear the issued permit on their outer clothing so as to be reasonably visible to any person who might be approached by said individual during the permitted Soliciting.
The individual Soliciting shall display on his or her person any object provided by the City to clearly and readily identify the individual to other citizens and law enforcement as a permittee.
The activities regulated under this Article shall immediately cease upon observation of a "no solicitation" sign at any residence.
No Solicitor or Peddler shall enter upon the property of another except between the hours of 9:00 A.M. and 7:00 P.M. unless such person has an express invitation to enter from the owner, resident, or occupant of the property.
No Person shall remove any yard, door, or entrance sign that gives notice to such Person that the resident or occupant does not invite visitors.
No Person shall enter upon any private property for the activities regulated under this Article where the current occupant has posted the property on the City's "no visit" list without a specific invitation (except where the posting form indicates the occupant has given permission for this type of visit), regardless of whether a sign is posted.
No handbill or flyer shall be left at or attached to any sign, utility pole, transit shelter, or other structure within the public right-of-way. The Police and City staff are authorized to remove any handbill or flyer found within the right-of-way.
No handbill or flyer shall be left at or attached to any privately-owned property in a manner that causes damage to such privately owned property.
No handbill or flyer shall be left at or attached to any property having a "no solicitation" sign.
Persons performing the activities regulated by this Article shall follow all applicable City, Sjtate, or Federal laws and regulations.
Operators of Ice Cream Trucks shall comply with all applicable health laws or regulations that the health authority has adopted or may adopt relating to Ice Cream Trucks.
A copy of proof of Ice Cream Truck's insurance coverage.
Notwithstanding the timing regulations herein, Ice Cream Trucks may only operate within the City between the hours of 11:00 A.M. to 7:00 P.M. on week days and 11:00 A.M. to 9:00 P.M. on the weekends.
No Person who obtained a permit or an agent, member, or representative of the same, shall advertise, represent, or hold out in any manner that the permit is an endorsement of the holder by the City or by any member of the City administration or Board of Aldermen thereof or by any organization which any of the same may represent.
If the City Clerk denies (or upon completion of an investigation revokes) the permit, he/she shall immediately convey the decision to the applicant orally and shall, within a reasonable time and in accordance with applicable law, prepare a written report of the reason for the denial which shall be immediately made available to the applicant. Upon receipt of the oral notification, and even before the preparation of the written report, the applicant shall have at his/her option an appeal of the denial of his/her application.
Subsequent knowledge by the City of fraud, misrepresentation, or incorrect statements provided by an applicant on the application form.
Fraud, misrepresentation, or false statements made during the course of the permitted Soliciting.
Any violation of this Article by the applicant or any Solicitor or Peddler during the course of the permitted Soliciting.
Fraud, misrepresentation, or incorrect statement made in the course of carrying on the permitted Soliciting.
Conducting the permitted Soliciting in such a manner as to constitute a breach of the peace or a menace to the health, safety, or general welfare of the public.
Subsequent conviction of any offense to which the granting of the permit could have been denied under this Article.
Violation of any law relating to public safety, health and welfare, zoning, or any Missouri or Federal law.
If the applicant appeals any decision made by the City under this Article, review from the decision shall be had pursuant to Chapter 160 of the Municipal Code.
In addition to any other remedy of the City hereunder, any Person violating any part of this Article, including trespass, shall have committed a municipal violation and shall be prosecuted in Municipal Court. The penalty for such violation shall be the same as for general penalty under Section 100.060 of the Municipal Code.
Purpose. The City finds that allowing Food Trucks to operate, subject to practical regulations and limitations, is beneficial to persons living and working within the City. This Article recognizes the unique physical and operational characteristics of Food Trucks, establishes standards for Food Truck operations, and promotes practices that serve the health, safety, and welfare of the public.
Delivery persons delivering food that has been purchased or ordered previously.
Deliveries of food items being made to businesses for resale or for business use.
Ice Cream Trucks which operate within the City otherwise permitted under Article I of this Chapter.
An automobile or trailer designed and used for cooking, preparation, assembling, and/or serving of a full or limited menu of single service food items from the automobile or trailer for use by consumers.
The owner of the Food Truck and/or any person driving and/or selling food items from the Food Truck.
A permit issued by the City for the operation of a Food Truck.
A vehicle from which the operator sells only pre-packaged frozen dairy or water-based food products and pre-packaged beverages.
Any single property, parcel, or any combination of contiguous parcels that are owned or controlled by a single entity or affiliated entities.
Food Truck Permit Required. It is a violation to operate a Food Truck at any Location in violation of the requirements of this Article or without a Food Truck Permit issued by the City Clerk. Prior to receiving a Food Truck Permit, an applicant must demonstrate that the applicant has all necessary approval, licenses, and permits from the applicable health department.
Any additional information required by the City Clerk to ensure the requirements of this Article are met.
Display. The Food Truck Permit must be prominently displayed when the Food Truck is in operation. Permittees operating under this Article must keep such Permit issued by the City available and present it upon request of any customer, City Official, or Law Enforcement Officer.
Change Of Information. Each Permittee shall have an ongoing duty to provide the City with notice of any change to any of the information submitted with the Food Truck Permit application.
Issuance. A Food Truck Permit shall be issued by the City Clerk upon verification that an application has been completed in accordance with the requirements of this Section. No Food Truck Permit shall be issued to an applicant whose Permit had been revoked in the preceding twelve (12) months.
Renewal. A Food Truck Permit may be renewed provided that all applicable requirements are met and the Permittee is in compliance with the requirements of this Article. The fee for renewal shall be the same as for a new Food Truck Permit.
Transferability. A Food Truck Permit is not transferrable.
No Food Truck shall operate in residential areas.
A Food Truck permitted hereunder may not remain at a Location over night or for more than six (6) consecutive hours.
Food Trucks shall not be permitted on unimproved Locations or at a Location where the Food Truck would be the primary use of that Location.
Where a commercial business located in the City has posted signs requesting "no solicitors" or "no peddlers," Food Trucks shall not call on such businesses or persons inside such businesses without a prior, specific invitation.
Blocks any of the required number of parking spaces of any Location.
Issuance of a Food Truck Permit under this Article by the City in no way authorizes the Food Truck to trespass on any property. If parking or remaining idle on private property in order to sell, offer for sale, or display a food item, the Food Truck Operator shall obtain prior, written permission from the owner(s) of such private property for the time period the Food Truck plans to remain on such private property, and the Food Truck shall keep such written permission in the Food Truck at all times the Food Truck is parked or idle on any such private property and provide it upon request of any City Official or Law Enforcement Officer.
If at one (1) Location for more than two (2) hours, the Food Truck Operator shall obtain a written agreement from a business within one hundred fifty (150) feet of the Food Truck, allowing employees of the Food Truck to have use of flushable restrooms (or other facilities as approved by the health authority) during hours of operation.
No Food Truck may go into a City park or park or remain idle on any public property (including streets and right-of-way) to sell, offer for sale, or display a food item, unless the Food Truck Operator's activity has received prior, written authorization from the Board of Aldermen.
No power cord, cable, or equipment shall be extended across any parking lot, public street, sidewalk, or other public property. No Food Truck Operator may use stakes, rods, or any other method of support that must be drilled, driven, or otherwise fixed into or onto asphalt, pavement, curbs, ground, sidewalks, or buildings.
In no event shall any Food Truck Operator invite or allow customers into the Food Truck.
A Food Truck Operator may only sell a food item(s) described in the Food Truck Permit and may not sell a non-food item. A Food Truck shall serve pedestrians only. Drive-through or drive-in service is prohibited.
A Food Truck Operator shall comply with all applicable health laws or regulations that the health authority has adopted or may adopt including regarding time, temperature, plumbing, operation, maintenance requirements, and any other related regulation.
The Food Truck must be kept neat and orderly at all times. During each period of operation at a Location, the Food Truck Operator must provide proper trash receptacles for public use that are sufficient and suitable to contain all trash generated by the Food Truck.
A Permittee operating a Food Truck shall demonstrate that the vehicle is readily moveable if requested by the City.
All food and supplies must be stored within the Food Truck.
In operating the Food Truck, a Food Truck Operator shall follow all applicable City, State, or Federal laws and regulations.
Suspension Or Revocation. The Board may suspend or revoke a Food Truck Permit of any person for cause shown. In such cases, the City Clerk shall schedule a hearing before the Board not less than ten (10) days prior to the effective date of revocation or suspension, and, prior to the hearing, the City Clerk shall give not less than ten (10) days' written notice to the Food Truck owner specifying the grounds for the suspension or revocation thereof and the time, date, and place of the hearing. Notice may be accomplished by personal delivery or U.S. Mail to the owner of the Food Truck as provided on the application. The hearing shall be conducted in accordance with Section 605.230 of this Chapter.
A Food Truck is operating in a manner that threatens the health, safety, or general welfare of the public.
Effect Of A Suspension. No person whose Food Truck Permit shall have been suspended by order of the Board of Aldermen shall operate a Food Truck in the City.
Violation. Any person violating any provision of this Article shall, upon conviction thereof, be adjudged guilty of a misdemeanor and punished as set out in Section 100.060 of this Code. The establishment of this penalty shall in no way take the place of or interfere with any suspension or revocation proceeding or the disapproval of any application for a subsequent Food Truck Permit.
Testimony — Evidence. The Food Truck owner shall be given reasonable notice of hearing and the grounds upon which discipline will be considered. Hearings before the Board of Aldermen shall be in the nature of informal investigations. Testimony of witnesses and other evidence pertinent to the inquiry may be taken in such hearings, and all proceedings in such hearings shall be recorded.
Witnesses — How Summoned. Subpoenas may be issued by the Board for any person whose testimony is desired at any hearing. Such subpoenas may be served and returns thereon made by any agent and in the same manner as provided by law for the service of subpoenas in civil suits in the Circuit Courts of this State. The Board also may issue subpoenas duces tecum requiring the production of documents or other items pertaining to the subject of the inquiry.
Witnesses To Be Sworn. Before any witness shall testify in any such hearing, he/she shall be sworn by the City Clerk to tell the truth and nothing but the truth. Witnesses shall be subject to direct and cross examination by an attorney representing the licensee as well as attorneys representing other interested parties.
Decision — Suspension Or Revocation. If the evidence supports a finding that the Food Truck Permit should be revoked or suspended, the Board shall issue a written order which shall include specific findings of fact setting forth the grounds for the action taken. If the evidence fails to support a finding that the Food Truck Permit should be revoked or suspended, then no such order shall be issued.
Any person aggrieved by a decision of the City Clerk or Board of Aldermen under this Article may appeal such decision pursuant to the procedures of Chapter 160 of the Municipal Code provided such appeal is filed within ten (10) days of the date of the decision. The Board may delay the implementation of its order pending appeal.