Mr. Vinod Chauhan, Ms. Radhika Pareva, Ms. Yagya Passi and Mr. Rajat Sinha, Advs v. PRONTON PLAST PACK PVT. LTD

Judgment

1. The appellant before us was the plaintiff in CS (Comm) 668/2023, in which the impugned order dated 2 May 2024 has been passed by the learned District Judge (Commercial), Patiala House Courts1, under Order XXXIX Rule 4 of the Code of Civil Procedure, Signature Not Verified 1 “the learned Commercial Court”, hereinafter Digitally Signed By:AJIT KUMAR Signing Date:14.07.2025 13:08:53 FAO (COMM) 114/2024 Page 1 of 35

2. Inasmuch as we are inclined to set aside the impugned order and remand the Order XXXIX Rule 4 application of respondent/defendant for de novo consideration, we would be restricting our discussion to the extent necessary for the said purpose.

3. The appellant was granted patents IN 4014173 and IN 2987244

5. For the sake of convenience, both the patents together would be referred to hereinafter as “suit patents”.

4. IN’417 was in respect of an invention titled “TAMPER- EVIDENT LEAK PROOF PAIL CLOSURE SYSTEMS”, whereas IN’724 was in respect of an invention titled “A TAMPER PROOF LID HAVING SPOUT FOR CONTAINERS AND PROCESS FOR ITS MANUFACTURE”.

5. Broadly speaking, we may note that the suit patents were both pertaining to a lid which covers a container. The containers, which are covered by the lid in question, are, we are told, used for storage and transport of food items.

6. Photographs of the lid, forming subject matter of suit patent IN’417, as such, and after it is fixed on the container, may be provided thus: 2 “CPC” hereinafter 3 “IN’417”, hereinafter 4 “IN’724” hereinafter 5 “the suit patents” Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:14.07.2025 13:08:53 FAO (COMM) 114/2024 Page 2 of 35 Before fixing on container Fixed on container

7. Mr. Jayant Mehta, learned Senior Counsel for the appellant, has shown us a physical sample of the lid forming subject matter of the suit patents and has also explained, to us what, according to him, are its inventive features.

8. Apropos the suit patent IN’417, Mr. Mehta submits that the lid had small projections all across its edge, called lugs, which enable the lid to be affixed and locked to the container. Once the lid is affixed and so locked, it cannot be removed. The part of the lid which is affixed to the container using the lugs becomes an integral part of the container and cannot be physically detached from it. The upper part of the lid is integrated with the lower part containing the lugs using what is called a tear band. This tear band has to be torn off, in order to detach the upper part of the lid. Mr. Mehta points out, if the tear band is detached and the upper part of the lid is thereafter replaced on to the lower part containing the lugs, the absence of the tear band would make it apparent to anyone who sees the lid that it has been tampered with. The tear band, thus, renders the lid “tamper proof” as well as Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:14.07.2025 13:08:53 FAO (COMM) 114/2024 Page 3 of 35 “tamper evident”.

9. IN’724, submits Mr. Mehta, essentially relates to the spout which is on the upper part of the lid. The spout can be opened, in case one needs to discharge the contents of the container only in part without opening the lid, that can be done through the spout. Mr. Mehta submits that the spout was also inventive, vis-a-vis spouts in earlier such lids, inasmuch as the spout cannot be removed and is integrated into the lid. Thus, the spout is also “tamper proof” and “tamper evident”. There are other features of the spout, to which Mr. Mehta has drawn our attention by showing us a physical sample thereof. However, for the purposes of this order, we do not deem it necessary to enter into those aspects.

10. This, in essence, forms the basis of the suit patents.

11. CS (Comm) 668/2023 was instituted by the appellant, alleging that the respondent/defendant was manufacturing and selling the following lid with a spout attachment, which infringed the lid and spout forming subject matter of the suit patents: Before fixing on container Fixed on container Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:14.07.2025 13:08:53 FAO (COMM) 114/2024 Page 4 of 35

12. The suit was accompanied by an application under Order XXXIX Rules 1 and 2 of the CPC, seeking an injunction, against the respondent, from infringing the suit patents by manufacturing and selling the allegedly offending lid.

13. By order dated 20 December 2023, the learned Commercial Court granted an injunction as sought by the appellant, and restrained the respondent in the following terms: “15. I have considered the arguments advanced by ld. Counsel for plaintiff and gone through the record as well as the photographs/comparative analysis of the plaintiff’s and defendant’s products which are annexed with the plaint as well as detailed comparison of the products as mentioned in para 60 and para 65 of the plaint. Prima facie, it is evident that defendant’s products had constructional and functional features similar to that of plaintiff’s patented products. Further, it seems that both these products in comparison had the same purpose. The essence of doctrine of equivalence is to preserve and protect the patented product. Hence, upon the facts and the circumstances of the case, a prima facie case has been made out in favour of the plaintiff and balance of convenience also lies in their favour and in the event, if defendant will not be restrained, it may cause injury to the business and goodwill of the plaintiff, hence, till the next date of hearing, the defendant or any person acting on their behalf is restrained from manufacturing, marketing, using or selling or offering for sale, importing in India, distributing, advertising, exporting and any other manner directly or indirectly dealing in any product namely plastic containers that infringes the plaintiff’s Indian Patent No. IN401417 and IN 298724 of any of the claims thereof.”

14. The respondent, as the defendant in the suit, moved an application under Order XXXIX Rule 4 of the CPC, for vacating the afore-noted ad interim injunction granted by the learned Commercial Court on 20 December 2023. Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:14.07.2025 13:08:53 FAO (COMM) 114/2024 Page 5 of 35 The impugned Order

15. By the impugned order dated 2 May 2024, the learned Commercial Court has vacated the ad interim order.

16. The reasoning of the learned Commercial Court, which commences from para 8 of the impugned order, reads thus: I have considered submissions made by ld. Counsels for “8. the parties and gone through the record.

8.1. The Patent Act, 1970 does not define infringement. Where the subject matter is a process, Section 48 (b) of the Act, 1970 confers, on the patentee “the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India”.

8.2. Section 107(1) of the Act “(1) In any suit for infringement of a patent every ground on which it may be revoked under section 64 shall be available as a ground for defence.” It is relevant to mention here that unlike the Trade Marks 8.3. Act, 1999, where grant of a trademark leads to a presumption of its validity; grant of patent does not lead to any statutory presumption as to its validity. Thus, if a defendant raises a credible challenge to the validity of the patent, the same is relevant for deciding whether any interim orders restraining the defendant from using the patent in question, is warranted. In case of F. Hoffmann La-Roche Limite v Cipla Limited6, 8.4. the Hon’ble Court observed that the court has to see the tenability and the credible nature of defence while deciding the grant or non- grant of injunction. If the defendant’s case is found to be tenable and there are serious questions as to validity to be tried in the suit, then the interim injunction in this case may not be granted. This practice is prevalent in the patent infringement cases where patentee always presses for injunction either interim or permanent and the defendant always attempts at the interim stage to raise a Signature Not Verified 6 ILR 2009 Supp (2) Del 551 Digitally Signed By:AJIT KUMAR Signing Date:14.07.2025 13:08:53 FAO (COMM) 114/2024 Page 6 of 35 question on the validity so as to cast doubt in the mind of the court on the validity aspect and seeks refusal of interim injunction. The court faces a bigger challenge in deciding as to which case warrants injunction and which case does not. It is equally well settled principles of grant of injunction in 8.5. the cases relating to patent infringement are no different from that of ordinary civil cases which are normally prima facie case, balance of convenience and irreparable loss. Lord Denning M.R. in his famous speech in the case of Hubbard and Another v Vosper and Another7, had observed in considering whether to grant an interlocutory injunction, the right course for a Judge is to look at the whole case and form a holistic view of the matter. In the words of Lord Denning, it was observed "In considering whether to grant an interlocutory injunction, the right course for a judge is to look at the whole case. He must have regard not only to the strength of the claim but also to the strength of the defence, and then decide what is best to be done. Sometimes it is best to grant an injunction so as to maintain the status quo until the trial.”

8.6. Again in a celebrated case of American Cynamid Co. v Ethicon Ltd.8 Lord Diplock speaking for House of Lords in England observed about the object of grant of interlocutory injunction in the following words: "The object of the interlocutory injunction is to protect the plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in an action if the uncertainty were resolved in his favour at the trial. In case of Glaverbel S.A v Dave Rose & Ors9, it is held

8.7. that: “85. The said fact again raises a disputed question of fact which requires evidence and raises a prima facie doubt on the fact as to whether the defendants are using the same process which corresponds to that of the plaintiff patent. At the interlocutory stage, this court has to form a just and a prima facie opinion and the disputed questions which have been asserted by the plaintiff and denied by the defendants and the veracity of which is in question requires a trial. Thus, the same is another reason for the non grant of interim injunction as question of infringement or no infringement in the present is disputed question of the fact.”

8.8. It is no more res integra that the court in such cases has to Signature Not Verified 7 (1972)1 All ER 1023 at 1029 8 [1975] RPC 513 9 2010 SCC Online Del 308 Digitally Signed By:AJIT KUMAR Signing Date:14.07.2025 13:08:53 FAO (COMM) 114/2024 Page 7 of 35 weigh the case of plaintiff vis-(cid:224)-vis the case of defendant if the plaintiff is able to satisfy that there is a serious question to be tried and the defence of invalidity of patent raised by the defendant is not credible or weak, then the court can conveniently grant interim injunction in favor of the plaintiff till the pendency of the proceedings. On the other hand, the defendant’s defence as to invalidity of patent is found to be credible one and defendant is able to satisfy that the said defence if proved and thrashed out in trial would lead to defendant being successful in the proceedings, then the interim injunction may be refused on the ground of credible and tenable defence. It is, however, a question of fact as to in which case the former proposition will hold good or the latter.

8.9. It is well settled law that it is incumbent upon the plaintiff to approach with clean hands, a principle that mandates the full disclosure of relevant and material facts. In case of S.P. Chengalvaraya Naidu v Jagannath and Others10, it was held that the Courts of Law are meant for imparting justice between the parties. One who comes to the Court, must come with clean hands. "It can be said without hesitation that a person whose case is based on false-hood has no right to approach the Court. He can be summarily thrown out at any stage of the litigation. A litigant, who approaches the Court, is bound to produce all the documents executed by him which are relevant to the litigation. If he withholds a vital document in order to gain advantage on the other side then he would be guilty of playing fraud on the Court as well as on the opposite party. Further, in Aura Synergy India Ltd. v New Age False Ceiling Co. Pvt. Ltd.11, the specific view that suppression and misrepresentation can have a bearing on interim injunction application, especially in the context of IP disputes, was upheld. The said decision has also been approved by the Id. Division Bench vide judgment dated 18th November, 2016 in Aura Synergy India Ltd. v New Age Faise Ceiling Co. Pvt. Ltd.12. Further, in FMC Corporation v GSP Crop Science Private Limited13, Hon’ble High Court held ’suppression and misrepresentation’ is one of the grounds available to a Defendant to challenge the grant of an interim injunction. In Gujarat Bottling Co. Ltd. v Coca Cola Co.14, the Supreme Court categorically held that since the grant of an injunction is wholly equitable in nature, the conduct of parties have a significant bearing on the grant or non-grant of an interim injunction. The relevant extract of decision is as follows: “In this context, it would be relevant to mention that in the