Delhi High Court: While hearing an application filed under Order 39, Rules 1 and 2 of the Civil Procedure Code, 1908 seeking grant of interim injunction against alleged patent infringement, the Single Judge Bench of Mini Pushkarna, J, held that the defendant had raised a prima facie credible challenge to the validity of the patent in question.
Accordingly, the Court declined to grant an interim injunction in favor of the plaintiffs.
Background
The plaintiffs had instituted the suit seeking permanent and interim injunction against the defendant for alleged infringement of Patent No. IN 533643, titled ‘A Foldable Product Display Unit’. The patent had been granted on 18-4-2024 after rejection of a pre-grant opposition filed by the defendant. The plaintiffs had claimed that the defendant was manufacturing and supplying foldable display units identical to the patented invention, which were found being used at retail outlets in New Delhi.
The interim application sought restraint against manufacture, sale, and dealing in the impugned display units. The defendant, along with denying infringement, had filed a counterclaim under Section 64 of the Patents Act, 1970 (‘the Act’) challenging the validity of the suit patent, alleging lack of novelty, absence of inventive step, prior public use, defective assignment, and anticipation by prior art including a published US patent application.
Analysis, Law and Decision
The Court reiterated that there is no presumption of validity merely because a patent has been granted, and that at the interim stage the determinative issue is whether the defendant has raised a credible challenge to the patent’s validity. While the defendant relied on documents such as emails, invoices, presentations, and videos to establish prior use, the Court held that such material could not, without trial and evidence, establish that the defendant’s earlier products embodied the same inventive features as claimed in the suit patent.
On the issue of prior art, the Court held that an abandoned foreign patent application, if published prior to the priority date, qualifies as prior art under Section 64(1)(f) of the Act. The Court noted that, any invention having been published in India or elsewhere, before the priority date of the claim, can be considered for the purposes of assessing obviousness. Merely because the US patent, as relied by the defendant, was ‘abandoned’, did not preclude its use as prior art against the suit patent, as prior art is to be pivoted on the ‘publication’ of the same either in ‘India or elsewhere’. Thus, any document, including, an abandoned patent application that is published and publicly available, qualifies as relevant prior art for the purposes of Section 64(1)(f) of the Act, regardless of whether it proceeds to grant or is ultimately abandoned.
Applying the settled five-step test for obviousness laid down in F. Hoffmann-La Roche Ltd. v. Cipla Ltd., 2015 SCC OnLine Del 13619, the Court opined that a person skilled in the art/ skilled craftsman, who is also aware of the common general knowledge, and is given the prior art, is faced with the challenge as identified in the suit patent, i.e., complex assembly of display units, folding the side panels in the same direction, would be obvious to the person skilled in the art. This is because the alteration in the direction in which the side panels fold, is at best, a routine design choice, which would come as a natural suggestion to the person skilled in the art, while he is engaged in assembling or folding a display unit in a workshop. The change in direction would not lie outside the probable capacity of the said person skilled in the art, as he is expected to have the ability to vary his methods of folding, and thus, folding the side panels in the same direction would be in his predictable variant of the prior art, requiring no ingenuity. This alteration would not require the person skilled in the art to conduct undue experimentation, given that there are limited possibilities in which the side panels can be folded. Thus, the folding of the side panels in the same direction cannot be said to be exceeding the skill/technique that is expected of a person skilled in the art, in his routine work.
Thus, this Court was of the prima facie view that the claimed invention would be obvious to the person skilled in the art, and therefore, the defendant had been able to raise a credible challenge to the validity of the suit patent under Section 64(1)(f) of the Act.
The Court held that the plaintiffs had failed to make out a prima facie case for grant of injunction. Further, considering the fact that the defendant has also been in the business of foldable product display units for a long time, balance of convenience lies in favour of the defendant and against the plaintiffs. Further, no prejudice shall be caused to the plaintiffs, as the plaintiffs can be compensated, in case the plaintiffs ultimately succeed in the suit, post-trial.
Accordingly, the Court declined to grant interim injunctive relief in favor of the plainiffs.
[Amitoje India Pvt. Ltd. v. Classic Display Systems Pvt. Ltd., 2025 SCC OnLine Del 10039, decided on 24-12-2025]
Advocates who appeared in this case:
For the Plaintiffs: Adarsh Ramanujan, Tarun Khurana, Meenakshi Ogra, Rajat Sabu, Samrat S. Kang, Parth Singh, Ritvik Jha, Divyanshi Bansal, Advocates
For the Defendant: Deepak Jain, Jaspreet Aulakh, Anoushka Singh, Dashampreet Kaur, Sajal Gupta, Arsh Raina, Devender Chauhan, Advocates