The article discusses an Appeal (FAO(COMM)114/2024) in a Patent infringement case concerning two Patents pertaining to tamper-evident and tamper-proof lids. The commercial court had initially granted an injunction which it later set aside. The judgment addresses the correctness of the commercial court's order setting aside the interim injunction and clarifies legal principles relating to patent infringement and the burden of proof in such cases.
Background and Suit Patents
The Appellant, Mold Tek Packaging Limited, holds two patents: IN 4014173 and IN 2987244. These patents pertain to tamper-evident and tamper-proof lids for containers used in food storage and transport.
- Patent IN 4014173: This patent is titled "TAMPER-EVIDENT LEAK PROOF PAIL CLOSURE SYSTEMS." The lid described in this patent has small projections called lugs around its edge, which enable the lid to be affixed and locked to the container. Once affixed, the lid cannot be removed without tearing a tear band that integrates the upper and lower parts of the lid. The removal of the tear band makes it apparent that the lid has been tampered with, thus rendering the lid both tamper-proof and tamper-evident.
- Patent IN 2987244: This patent is titled "A TAMPER PROOF LID HAVING SPOUT FOR CONTAINERS AND PROCESS FOR ITS MANUFACTURE." This patent focuses on the spout integrated into the upper part of the lid. The spout allows for partial discharge of the container's contents without opening the lid. The spout is designed to be tamper-proof and tamper-evident, as it cannot be removed and is integrated into the lid.
The Appellant alleged that the Respondent, Pronton Plast Pack Pvt. Ltd., manufactured and sold lids that infringed these patents.
High Court's observation and Ruling
The High Court did not comment on the merits of the case. However, found significant deficiencies in the impugned order. Therefore, set aside the impugned order vacating the injunction. Further, remanded the matter to the Commercial Court for de novo consideration of the Respondent's application (under Order XXXIX Rule 4) for setting aside the interim injunction. The High Court directed the parties to file concise notes and compilations of authorities for the fresh hearing scheduled on 25 July 2025. Until the fresh order, the original injunction granted on 20 December 2023 restraining the Respondent was restored. The court in its order noted:
- Lack of Infringement Analysis: The learned Commercial Court did not conduct a proper comparison between the Respondent's product and the Appellant's patents. Instead, it incorrectly treated the defendant's argument of product dissimilarity as a valid and credible defence without examination.
- Burden of Proof: The impugned order wrongly shifted the burden of proving novelty and adoption by the defendant onto the Appellant, whereas the legal position is that the plaintiff must initially prove infringement, and thereafter, the defendant must substantiate any challenge to patent validity. The High Court pointed out that the lower court made fundamental errors in understanding the statutory and legal position, particularly regarding the burden of proof and the evaluation of credible challenges to patent validity.
- Consideration of Prior Art: The learned Commercial Court failed to adequately consider prior art references presented by the Respondent, such as patent IN 28812734 and the earlier patent IN 276, in assessing the credibility of the challenge to the suit patents.
- Section 107 Defence: The Court did not properly evaluate whether the Respondent had raised a credible challenge under Section 107 of the Patents Act, which is critical before vacating an injunction.
- General Principles without Specific Application: The High Court found that the lower court's order contained general principles unconnected with the specific facts of the case. There was no detailed examination of whether the Respondent's products infringed the Appellant's patents or whether the patents were vulnerable to revocation
The High Court reiterated established principles governing patent infringement suits:
- The plaintiff must demonstrate a prima facie case of infringement by mapping the defendant's product to the patent specifications.
- The defendant's burden is to raise a credible challenge to the patent's validity, supported by evidence, to avoid injunction.
- The standard for a credible challenge is high; it must not be merely a shadow of doubt but a substantial question warranting trial.
- The conduct of parties, including full disclosure and absence of misrepresentation, is relevant in equitable relief such as injunctions
Our comment
This judgment comprehensively addresses the procedural and substantive aspects of patent infringement litigation, emphasizing the need for rigorous analysis of infringement and validity challenges, proper allocation of burdens, and adherence to equitable principles in granting or vacating interim injunctions.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
