Focus on judicial trend of temporary injunctions in Indian patent litigation

By Rahul Sharma, LexOrbis
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Temporary or interim injunctions are not defined by India’s Patents Act, 1970. Their grant is governed by the Code of Civil Procedure under Indian law. The code especially includes clauses that describe patent owners’ rights to obtain interim injunctions so as “to maintain the status quo” while litigation is in progress.

Rahul Sharma LexOrbis律师事务所 工程业务组专利律师 Patent Associate with the Engineering Group LexOrbis
Rahul Sharma
LexOrbis律师事务所
工程业务组专利律师
Patent Associate with the Engineering Group
LexOrbis

As listed in the code, parameters governing the grant of such injunctions include existence of a prima facie case in favour of the patentee-plaintiff, balance of convenience in favour of the patentee-plaintiff, and probability for suffering irreparable loss and injury by the plaintiff.

Past decisions

In the patent litigation scenario concerning automotive, electronic, telecoms and consumer products-based industries, the court’s decisions prior to 2008 were not particularly encouraging in respect of the grant of injunctions. In 2008, the Madras High Court decision in Bajaj Auto v TVS Motor Company was a welcome change.

The decision granted an interim injunction to the plaintiff, Bajaj Auto, after examining the parameters for the granting of an injunction in patent infringement cases.

The major necessity within patent suits is the first parameter, which must be established due to an absence of presumptive validity to a patent under section 13(4) of the Patents Act. Since a granted patent is never presumed to be valid under the Patents Act the plaintiff must establish the first requirement.

The six-year rule

In the case of Bajaj Auto v TVS Motor, the High Court of Madras granted an interim injunction to the plaintiff, Bajaj Auto, holding that the prescribed tests for grant of an injunction were satisfied. The court held the yardstick to ascertain validity of a patent was the “six-year rule”, which states that if a patent is more than six years old and there has been actual use of the patented product or process, presumption of validity of patent must be drawn.

The court also opined that it is sufficient to show that the patent has prima facie novelty. In another case – Mariappan v Safiullah, the same high court upheld the same principle and re-affirmed the “six-year rule”.

Likewise, in recent judgments by Indian high courts related to alleged patent infringements – notably Ericcson v Micromax and Vringo v ZTE Corporation – temporary injections have been readily granted against accused patent infringers.Especially in Ericsson v Micromax, the Delhi High Court granted the interim injunction on the very first day without hearing Micromax’s defence, and issuing a legal notice that it had been sued. Going by precedents, an ex parte interim injunction is usually issued on the ground of “urgency”, where the plaintiff will suffer irreparable injury if it waits for the courts to issue notice to the opposite side, hear arguments and subsequently pass an order.

Such ex parte orders are an exception to the general rule that injunctions are issued only after hearing both sides of the dispute. However, it was surprising that the high courts did not discuss the urgency element while granting ex parte temporary injunctions in these judgments.

Healthcare-based litigation

In healthcare industry-based patent litigation, the interim injunction trend is different. The judgment in F Hoffmann la Roche v Cipla by the Delhi High Court diluted the six-year rule and treated pricing as one of the factors to be considered while granting an interim injunction. In another matter, B Braun Melsungen & Ors v Rishi Baid, the Delhi High Court also refused to grant an interim injunction on similar grounds.

The court did, however, direct the alleged infringers to keep accounts of the manufacture and sale of the allegedly infringing product.

Further, in Bristol-Myers Squibb Company v Ramesh Adige, the Delhi High Court refused to grant an interim injunction to the plaintiff on the ground that the plaintiff imported the patented drug, and the price of the drug was almost three times higher than the defendant’s product.

Significant departure

In a significant departure, the court in Bayer Corporation & Anr v Cipla ordered that instead of deciding upon the interim injunction application, the suit would be expedited directly to trial, and to that effect also appointed two scientific advisers under section 115 of the Patents Act for expert opinion. In addition, either party was allowed to cross-examine such appointed scientific advisers.

Uphill battle

As patent litigation progresses in India, interim injunctions hold the key. Yet very often it has been seen that unless the patent in suit is free from any opposition or any other violation, the patentee has to struggle to get an interim injunction against the infringers.

Another crucial factor that impacts granting interim injunctions is whether the infringing product has yet been launched. In addition, the importance of quality of patents must be assessed beforehand, as this affects the enforcement of patents in litigation.

However, the usual trend of judicial decisions clearly proves that interim injunctions often tend to delay the speedy progress of the patent infringement lawsuit.

Opinions and suggestions

As a result, there have been opinions and suggestions about doing away with the interim injunction phase and moving to the trial stage directly, in view of the fact that the Indian courts are inexperienced in handling complex patent disputes when compared with European and US judicial systems.

Nonetheless, it is expected that the coming years will see India’s patent litigation arena evolving more judicious application of the principles governing the granting of interim injunctions, thereby evolving jurisprudence.

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