Factual Background
Mold Tek Packaging Limited is engaged in the manufacture and sale of plastic packaging containers and holds two Indian patents: IN 401417 and IN 298724. Patent IN 401417 relates to a “Tamper-Evident Leak Proof Pail Closure System,” which consists of a lid that incorporates lugs along its periphery. These lugs allow the lid to be affixed to a container in a manner that prevents its removal without breaking a tear band, thereby making any tampering evident. Patent IN 298724 relates to “A Tamper-Proof Lid Having Spout for Containers and Process for Its Manufacture.” The innovation in IN 298724 includes a spout that allows partial discharge of contents without removing the lid entirely. Both patents are intended for containers used in the storage and transport of food items.
Mold Tek alleged that Pronton Plast Pack Pvt. Ltd. was manufacturing and selling products that were functionally and structurally similar to Mold Tek’s patented lids, thus infringing both patents. Photographic comparisons were made, and physical samples were presented in court to demonstrate the similarity between the products.
Procedural Background
Mold Tek instituted CS (Comm) 668/2023 before the learned District Judge (Commercial), Patiala House Courts, seeking an injunction against Pronton Plast for infringing its patents. Along with the suit, Mold Tek filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking ad interim relief. On 20th December 2023, the Commercial Court granted an ex parte ad interim injunction, restraining Pronton Plast from manufacturing, marketing, selling, or dealing with any products that allegedly infringed Mold Tek’s patents IN 401417 and IN 298724.
Pronton Plast responded by filing an application under Order XXXIX Rule 4 CPC to vacate the injunction, contending that their product was significantly different and did not infringe the suit patents. They also argued that Mold Tek’s patents lacked novelty due to prior art disclosures, and there was suppression of material facts regarding earlier patents, particularly IN 276, which had lapsed.
By order dated 2nd May 2024, the learned Commercial Court vacated the interim injunction, accepting Pronton Plast’s arguments about prior art and serious triable issues concerning the validity of the patents. Mold Tek then filed an appeal under Section 13A of the Commercial Courts Act read with Order XLIII of the CPC, challenging the order dated 2nd May 2024 before the Division Bench of the Delhi High Court.
Core Dispute
The central issue in this case is twofold:
- Whether Pronton Plast’s products infringe Mold Tek’s patents IN 401417 and IN 298724.
- Whether the respondent has raised a credible challenge to the validity of Mold Tek’s patents sufficient to warrant vacation of the interim injunction?
The dispute also involves procedural questions concerning the standard of review applicable in interim patent litigation, the requirement for product-to-patent mapping versus product-to-product comparison, and the burden of proof in cases where prior art is cited as a defence.
Discussion on Judgments
Several judicial precedents were cited by the parties to support their respective claims:
- F. Hoffmann-La Roche Ltd. v. Cipla Ltd., ILR 2009 Supp (2) Del 551 – relevance of a credible challenge at the interlocutory stage.
- Glaverbel S.A. v. Dave Rose & Ors., 2010 SCC OnLine Del 308 – disputed infringement facts must be adjudicated at trial.
- Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511 – invention must involve inventive step beyond mere improvement.
- S.P. Chengalvaraya Naidu v. Jagannath, AIR 1994 SC 853 – importance of full disclosure of material facts.
- Aura Synergy India Ltd. v. New Age False Ceiling Co. Pvt. Ltd., (2016) 65 PTC 483 – suppression of facts can bar interim relief.
- Gujarat Bottling Co. Ltd. v. Coca Cola Co., (1995) 5 SCC 545 – conduct of party seeking equitable relief is material.
- Sotefin S.A. v. Indraprastha Cancer Society, 2014 SCC OnLine Del 6649 – product-to-patent comparison is essential for infringement.
- Strix Ltd. v. Maharaja Appliances Ltd., 2009 SCC OnLine Del 2825 – credible challenge must be supported by expert evidence.
- Kudos Pharmaceuticals Ltd. v. Natco Pharma Ltd., 2024 SCC OnLine Del 1439 – credible challenge requires a prima facie case.
Reasoning and Analysis of the Judge
The Division Bench of the Delhi High Court found that the Commercial Court’s order dated 2nd May 2024 suffered from significant legal infirmities. The Court held that the Commercial Court failed to properly analyze the issue of infringement. The correct method of analysis requires a product-to-patent mapping, wherein the features of the allegedly infringing product are compared with the claims in the suit patents, not merely with the plaintiff’s product. The Commercial Court’s approach of comparing products without reference to patent claims was held to be erroneous.
The Court further held that in patent litigation, if the defendant raises a defence under Section 107 of the Patents Act, the burden lies on the defendant to establish a credible challenge to the patent’s validity. This onus does not shift to the plaintiff merely because the plaintiff describes its invention as an improvement over prior art.
Regarding prior art, the Court noted that the Commercial Court did not conduct a proper analysis of whether the cited prior arts anticipated or rendered the suit patents obvious. Specifically, while Pronton Plast cited IN 276 and IN 288127 as prior arts, the Commercial Court did not perform a claim-by-claim analysis to determine whether the suit patents were actually anticipated or obvious.
The Division Bench also rejected the respondent’s submission that the initial ex parte injunction should be revisited in this appeal, holding that since the respondent had chosen to proceed under Order XXXIX Rule 4 CPC rather than file an appeal against the ex parte injunction, the High Court could not review the 20th December 2023 order in this appeal.
Final Decision
The High Court allowed the appeal and set aside the order dated 2nd May 2024 passed by the learned Commercial Court. The matter was remanded back for de novo consideration of the application under Order XXXIX Rule 4 CPC. The Commercial Court was directed to reconsider the issues of infringement and validity challenge afresh, applying correct legal principles, particularly the product-to-patent comparison method and the proper allocation of burden of proof.
Law Settled in This Case
This case reaffirms that in patent infringement suits:
- The test for infringement requires a product-to-patent mapping, not product-to-product comparison.
- The burden of proof in establishing a credible challenge to a patent’s validity under Section 107 of the Patents Act lies entirely on the defendant.
- The mere existence of prior art is not sufficient to defeat interim relief unless it is demonstrated that the patented invention lacks novelty or is obvious.
- Procedural fairness and equitable considerations must be balanced with substantive patent law principles when courts consider interim injunctions.
Case Details
- Case Title: Mold Tek Packaging Limited vs Pronton Plast Pack Pvt. Ltd.
- Date of Order: 11th July 2025
- Case Number: FAO (COMM) 114/2024
- Neutral Citation: 2025:DHC:5549:DB
- Name of Court: High Court of Delhi at New Delhi
- Judges: Hon’ble Mr. Justice C. Hari Shankar & Hon’ble Mr. Justice Ajay Digpaul
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor – Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539
