Patent Infringement Must Be Judged Against Claims | Delhi HC Sets Aside Commercial Court Order And Urges Legislative Clarity On Section 104A
Sanchayita Lahkar
The High Court of Delhi Division Bench of Justice C. Hari Shankar and Justice Ajay Digpaul held that an order passed by the Commercial Court vacating an earlier ex parte injunction in a patent infringement suit was legally unsustainable and required de novo consideration. The Court set aside the Commercial Court's order dated 2 May 2024, which had vacated an injunction granted on 20 December 2023, and directed that the application under Order XXXIX Rule 4 of the Code of Civil Procedure be restored for reconsideration. The Division Bench clarified that the Commercial Court had failed to examine the essential aspects of patent infringement and the alleged credible challenge to the validity of the patent.
The High Court observed that "the impugned order dated 2 May 2024, passed by the learned Commercial Court, cannot sustain either in law or on facts," and accordingly directed that the application seeking vacation of injunction be reconsidered uninfluenced by the earlier findings. Until such reconsideration, the ex parte injunction granted on 20 December 2023 shall continue to remain in operation.
The plaintiff in CS (Comm) 668/2023 had been granted Indian patents IN 401417 and IN 298724. These patents relate to tamper-evident and leak-proof plastic container lids used primarily for food storage and transportation. Patent IN’417 pertains to a "Tamper-Evident Leak Proof Pail Closure System," and Patent IN’724 pertains to "A Tamper Proof Lid Having Spout for Containers and Process for Its Manufacture."
The plaintiff alleged that the defendant was manufacturing and selling lids that infringed the features protected under the suit patents. Specifically, the defendant’s product allegedly incorporated a tear band mechanism and a spout similar to the plaintiff’s patented technologies. The suit was accompanied by an injunction application under Order XXXIX Rules 1 and 2 of the CPC.
On 20 December 2023, the learned Commercial Court granted an ex parte injunction, restraining the defendant from manufacturing, selling, or dealing in any product infringing the plaintiff’s patents. The Court observed that "prima facie, it is evident that defendant's products had constructional and functional features similar to that of plaintiff's patented products" and that "in the event, if defendant will not be restrained, it may cause injury to the business and goodwill of the plaintiff."
Subsequently, the defendant filed an application under Order XXXIX Rule 4 CPC seeking vacation of the interim injunction. The defendant argued that its product significantly differed from that of the plaintiff, pointing out design elements such as ridged closures, specific lock teeth, single wall periphery, and a three-piece tear band strip. The defendant contended that the tear band in its product opened only on three sides and did not detach automatically.
Additionally, the defendant alleged that the plaintiff had presented a non-patented product for comparison to seek the injunction and had not disclosed the existence of earlier similar patents such as IN’276, which had expired. The defendant further submitted that the features in the plaintiff’s patents were already part of the prior art, citing multiple prior patents and public use.
The learned Commercial Court, by its order dated 2 May 2024, allowed the defendant’s application and vacated the injunction. The Court opined that the plaintiff had failed to make full disclosure and had relied on false and misleading statements. The order also noted the existence of substantial questions regarding novelty and inventive steps claimed in the patents.
The plaintiff appealed against this order under Section 13A of the Commercial Courts Act read with Order XLIII CPC. The appellant contended that the impugned order lacked legal reasoning and failed to consider whether the respondent’s product mapped onto the suit patents. It was further argued that the Commercial Court incorrectly shifted the burden of establishing novelty from the defendant to the plaintiff, despite Section 107 of the Patents Act placing the onus on the party challenging the validity.
In reply, the respondent argued that the plaintiff had claimed novelty over prior patents and must therefore bear the burden of proving the same. It was further submitted that the Court should consider the original injunction order of 20 December 2023 as lacking legal merit and sought to have it set aside.
The Court recorded that "the impugned order dated 2 May 2024, passed by the learned Commercial Court, cannot sustain either in law or on facts." It was held that the Commercial Court failed to undertake the necessary judicial examination of the two critical aspects in any patent infringement case: (i) whether the defendant’s product infringed the suit patent and (ii) whether the defendant had raised a credible challenge to the validity of the patent under Section 107 of the Patents Act.
The Division Bench observed: "There is no discussion, by the learned Commercial Court, regarding the aspect of infringement, which is the first aspect that the Court is required to consider." It noted that the Commercial Court had erroneously treated the defendant’s claim of non-similarity as a "valid credible defence" without evaluating the merits or mapping the defendant’s product to the patent specifications.
It was further recorded: "The comparison has to be product-to-patent, and not product-to-product." Referring to Section 48 of the Patents Act, the Court stated that infringement is to be assessed by comparing the allegedly infringing product with the complete specifications of the suit patent, not with any physical product of the plaintiff.
With respect to the credible challenge, the Court clarified that "a defendant is not required to make out a cast iron case... [but] the challenge must not be incredible, fanciful, or moonshine. It must not strain the sinews of acceptability."
Regarding the burden of proof under Section 107, the Court noted: "The onus to establish that the plaintiff’s suit patent was vulnerable to invalidity... continues to remain on the defendant." It held that the Commercial Court had erred in shifting this burden to the plaintiff by requiring it to prove that the patent was novel vis-a-vis the prior art.
The Bench held that it had not examined the substantive merits of infringement or the alleged prior art and that such questions are to be re-examined de novo by the Commercial Court.
The Division Bench directed that "the impugned order dated 2 May 2024 passed by the learned Commercial Court is quashed and set aside." It ordered that the application under Order XXXIX Rule 4 of the CPC filed by the defendant be "restored to the file of the learned Single Judge, for consideration de novo."
The Court further clarified: "The Registry would register the application filed by the appellant under Order XXXIX Rule 1 & 2 of the CPC as well as the application of the respondent under Order XXXIX Rule 4 of the CPC, fresh registration numbers."
It was explicitly directed that "the learned Single Judge would consider the said applications uninfluenced by any observation contained in the impugned order dated 2 May 2024."
Pending such reconsideration, the Division Bench stated that "the order dated 20 December 2023, whereby ex parte ad interim relief was granted by the learned Commercial Court, shall continue to remain in operation."
It was further directed: "In order to expedite matters we direct the parties to appear before the learned Single Judge on 25 July 2025."
Additionally, the parties were instructed to submit "short notes not exceeding six pages each... along with duly indexed compilations of any judicial authorities... at least 48 hours in advance of the next date of hearing." The parties also undertook "not to take any adjournment on the next date before the learned Single Judge."
Advocates Representing the Parties:
For the Petitioners: Mr. Jayant Mehta, Senior Advocate with Mr. Ashutosh Kumar, Mr. Vinod Chauhan, Ms. Radhika Pareva, Ms. Yagya Passi and Mr. Rajat Sinha, Advocates
For the Respondents: Mr. J. Sai Deepak, Senior Advocate with Mr. Vikas Khera, Mr. Lalit Ambastha, Ms. Sneha Sethia, Mr. Yash Sharma and Mr. Subham Rathore, Advocates
Case Title: Mold Tek Packaging Limited v. Pronton Plast Pack Pvt. Ltd.
Neutral Citation: 2025: DHC:5549-DB
Case Number: FAO (COMM) 114/2024
Bench: Justice C. Hari Shankar and Justice Ajay Digpaul
