INTRODUCTION
The concept of patent validity might seem like an easy feat, but the intricacies associated with it hold innumerable obstacles. The historical perspective manifestly asserts that the existence of a patent, by virtue of itself provides for a presumption of granted rights administered in judicial proceedings by allowing the inculcation of such granted patents into evidence.[1]
In Bilcare Ltd. v. M/S The Supreme Industries Ltd.[2], the Delhi High Court affirmed a lower court order vacating ex parte injunctions against an alleged infringer of a patent, rejecting arguments that the patent should be presumed valid even though the patent was the subject of opposition proceedings. The court duly held that the two years of use of patent cannot be figured as sufficiently old and that there exist tangible grounds for suspicion of the alleged invention. Through this judgment, it has to be inferred that even in the case of preliminary relief, there has to be some opportunity to showcase invalidity prior to being subjected to significant consequences, except in scenarios where extremely strong policies prevent the goal of scrounging for the truth with respect to validity.[3]
CONTEMPLATING THE INVENTION
The invention in question showcases a multilayer thermoformable, translucent pharmaceutical and food packaging film which has a core PVC layer, a metallized layer and a third polymeric layer ranging from 0-250 microns, and which prevents moisture from entering the material packaged using the same. Plaintiff (Bilcare) claimed that PVC films made prior to its invention were incapable of preventing moisture from passing through and were therefore unsuitable for packaging medicines and vitamin tablets. The PVC invented by Plaintiff had the additional quality that was highly desirable – it was translucent, thereby allowing patients to identify them easily.
JUDGMENT, ANALYSIS & INTERPRETATION
The primary facet of the dispute is highlighted when the defendant was found to be manufacturing and marketing similar PVC films, which Bilcare alleges is an infringement of their exclusive rights under the patent. Pending the final decision of the cases, Bilcare obtained ex parte injunctions against the defendant, which were later set aside on motion by the defendant. Thereafter, an appeal was filed by the Plaintiff before the Hon’ble Delhi High Court.
The primal issue deliberated was whether there is an any presumption in favor of the validity of the patent for grant of temporary injunction in favor of the patentee? In order to answer this, reliance was placed on Section 13(4) of the Patents Act, 1970 and it was noted that there exists no presumption of validity of a patent.[4]
In relation to this, it was deliberated whether no interim injunction could be granted if the validity of the patent was challenged. This issue was discussed in relation to the age of the patent.
The court cited a plethora of judgments like K. Ramu vs Adyar Ananda Bhavan[5] as well as placed reliance on multiple literature, which state that when the validity of a patent is challenged and a revocation application is filed, no injunction should be granted. However, it has also been held that once a violation is established in a case of a registered patent, subject of course to the patent being used, it would not be possible to contend that the patentee is not entitled to an injunction.
Furthermore, the defendant claimed that the invention is not novel because the plaintiff failed to disclose that it was not manufacturing the product itself but was sourcing the same from a Taiwanese corporation. The defendant also contended that the plaintiff had started selling the product before filing a patent application (thereby killing its novelty). In response, the plaintiff claimed that the know-how for manufacturing the product was given by the plaintiff to the Taiwanese corporation and that the product it was selling before applying for the patent was different from the patented product. The court did not accept either of these arguments and held that the original injunction was obtained without disclosing the complete facts.
Considering the above arguments as well as the fact that the patent was granted recently and there was a post grant opposition pending against the grant of the patent, the court came to the conclusion that the balance of convenience was in favor of vacating the injunction.
CONCLUSION
The above deliberated judgment elaborates the fact that one has to be vitally concerned with respect to the likelihood of success derived from review of an order vacating ex parte injunctions. The patent holder seeking preliminary relief holds the burden of production and persuasion with respect to infringement and validity, unambiguously.[6] In such a context, the policy choices are needed to be understood in regard to whether and how presumptions of validity should apply in varied procedural contexts, and as to how policies must be developed not regarding the legal weight to be accorded by multiple equitable balancing factors, especially the evidentiary burdens that are to be imposed while demonstrating the facts that act as a trigger to conclude these factors.[7]
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[1] Morgan v. Daniels, 153 U.S. 120, 123-24 (1894) (noting different review standards applied to proof of prior invention and priority of invention, and stating “there is always a presumption in favor of that which has been once decided”) [2] 2007 (34) PTC 444 Del [3] Abbott Labs., Inc. v. Andrx Pharms. 452 F.3d 1331, 1334-45 (Fed. Cir. 2006) (discussing the standards for obtaining preliminary injunctive relief, providing an opportunity to challenge validity, in regard to a patent for an extended relief formulation of the antibiotic clarithromycin) [4] § 13(4) The examination and investigations required under section 12 and this section shall not be deemed in any way to warrant the validity of any patent, and no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any such examination or investigation or any report or other proceedings consequent thereon. [5] 2007 (34) PTC 689 Mad [6] John J. Feldhaus, Preliminary and Permanent Injunctions in Patent Cases, 804 PLI/PAT 521, 534 (2004) [7] Praxair, Inc. v. Atmi, Inc., 479 F. Supp. 2d 440, 443 (D. Del. 2007) (noting that to prove an entitlement to permanent relief, a patent holder must demonstrate “inter alia, irreparable injury and the inadequacy of legal remedies,” but “the quantum of evidence required is relatively unclear”)
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