In a pathbreaking decision, and a first from an Indian court, several aspects of patent law in India were clarified and discussed. This newsletter discusses these.

1. An infringing product not kosher even after expiry of the patent

Justice Sanjeev Narula of the Delhi High Court held that “if an infringement has occurred during the lifetime of a patent, the infringing goods would not become kosher on expiry of the patent.” The questions raised before the court were important ones as to whether a patent loses its sheen as it nears the end of its term. Should a patentee be less entitled to the full measure of reliefs near the end of the patent? Justice Narula decided all these issues in favor of the patentee, holding that if a patentee approaches the court for enforcement of its rights during the subsistence of the patent, irrespective of the length of the balance period of the life of the patent, it would be the duty of the court to enforce the same, giving the full benefit of the enforcement provisions of the Patent Act and other provisions of law, “without exception”. In the facts of the case, the patent was to expire within a month from the date of the decision and the argument raised by the opposite party was that since the patent was expiring soon, no injunction should be granted in favor of the patentee.

Since an Indian court had not had an opportunity of answering this important question, the court agreed with the proposition of law in American and English authorities that any product which is infringing, during the term of the patent, would continue to be tainted, after the expiry of the patent as well. The infringement does not get dissolved after the lapse of the patent.

A cat may have many lives, a patent has only one, and that too a short one. It takes years for a patent to born. Years of hard work towards its inception followed by years of pregnancy in the form of filing and examination, the life of a patent is always living a charmed life. At any time, it is open to challenge, from pre-grant to post-grant oppositions in its young life to rectification proceedings on any and every ground. The judgement now ensures that the limited life of a maximum of 20 years now gets its full measure of protection, till it breathes its last.

2. International exhaustion not applicable to patents

There are other aspects of the case which are equally pathbreaking. The court held that the Indian patent law protect patents granted in India. Patent laws are essentially territorial in nature and Indian courts will not permit importation of products even if the patent is registered in the name of other entities in other parts of the world. The court also held that unlike trademarks, the doctrine of international exhaustion is not applicable to patents under Indian law.

3. Damages not a substitute for injunctions

Another important finding of the court was on the grant of injunctions. The court held that damages is never an alternative to injunctive relief and even if the infringer is able to eventually compensate a patentee in the form of damages, injunctive relief is not to be denied.

4. A patent is infringed even if a single claim is infringed

The Court made another significant finding that mapping of one of the independent claims (claim no.1) was sufficient to constitute infringement, even if the dependant claims may differ, without going into the mapping of the remaining, dependent claims.

5. Courts must identify the “pith and marrow” of the patent for infringement

The court laid down the principles which apply to reading a patent specification. The court observed that a patent specification has to be read by a notional person who was acquainted with the language of the patent claim. Infringement can occur in a non-literal sense where each and every element of a patent claim is not found in the infringing product. It is the pith and marrow which is required to be copied and courts are not to get engaged in a meticulous comparison of the detailed specification. The court is also to apply the doctrine of equivalence to see if the infringing product does the same work in substantially the same way to accomplish substantially the same result. Minor variations cannot be treated as a shield from piracy.

6. “Hot tubbing” procedure followed

This is also one of the first cases in which the court followed the hot tubbing procedure. The court not only asked for an independent expert analysis from IIT Delhi, but requested the experts to be available in court to answer queries. This procedure dubbed as “hot tubbing” and incorporated in the Delhi High Court Rules recently was followed for the first time by an Indian court.

Details of the dispute

The matter pertained to patent IN214088 (hereinafter referred to as ‘088) owned by SOTEFIN SA (the Plaintiff) covering a self-propelled carriage on wheels, for horizontal transfer of motor vehicles by lifting two or more wheels, in single or multi automatic mechanical car parks, known as ‘Silomat Dolly’. The Plaintiff asserted its right against four defendants. Defendant no. 1 (D1, Indraprastha Cancer Society & Research Centre) is a not-for-profit public society and operates/manages Defendant No. 2 (D2, Rajiv Gandhi Cancer Institute and Research Centre). Defendant no. 3 (D3, Simplex Projects Limited) had a supply contract agreement with the Plaintiff for Silomat Dollies. D2 floated a tender in 2017 for which the tender for an automatic car parking system for its site at Rohini, Delhi. Plaintiff approached D2 and also made it aware of the suit patent. In November 2020 the Plaintiff learnt that one Simpark Infrastructure Private Limited (Defendant No. 4) is handling the parking project at Defendant No. 2’s site. Defendant No. 3 is the largest shareholder of Defendant No. 4 and controls its operations and management. On investigation it was found that D1 had placed an order for import of 14 Smart Dollies from a Chinese company, Nanjing Eli Parking Equipment Manufacturing Co. Ltd. The Plaintiff alleged that the Smart Dollies infringed its patent ‘088. The Plaintiff was granted injunction and the order was pronounced by the Hon’ble Delhi High Court pronounced on 17th February, 2022 (CS(COMM) 327/2021).

This indeed is a landmark judgement that will guide the future course of patent enforcement in India. The issues of doctrine of equivalence, parallel imports, indirect infringement, damages and injunction have been haunting patentees in India for many years. This judgement provides clarity on many issues. The issue of parallel imports has been a cause of major worry and also one of the reasons for portraying India as not-a-patent-friendly jurisdiction. This will likely have ramifications across industries, especially in the pharmaceutical industry. We may have just turned a new leaf.

Sotefin SA Final Judgment