PATENT EXPIRY BARS TOYOTA’S CLAIM FOR INJUNCTION: DELHI HIGH COURT

In a recent order pronounced on July 01, 2025, in a patent infringement suit titled as Kabushiki Kaisha Toyota Jidoshokki vs. LMW Limited, the Hon’ble Delhi High Court (“the Hon’ble Court”) denied interim injunction to Kabushiki Kaisha Toyota Jidoshokki (“Plaintiff”) and decided in favor of LMW LIMITED (“Defendant”). The Hon’ble Court by way of a detailed order has denied interim relief to the Plaintiff since the Patent in question had already expired, rendering the injunction request infructuous. However, the Hon’ble Court allowed the Plaintiff to pursue damages through trial for any infringement that may have occurred during the patent’s subsistence and also directed the Defendant to “file an affidavit of one of its responsible representative along with its Balance Sheets/ Books of Accounts/ relevant statements/ ITR records and/ or any other sufficient proofs/ records maintained with it since and from when it has been dealing with Spinpact, containing the alleged features of IN759, including the products it has manufactured, but is yet to sell, upto the date of expiry of IN759, i.e. May 24, 2025, within a period of eight weeks  from this decision.”

BACKGROUND

The present patent infringement suit was filed by the Plaintiff seeking injunction against the Defendant for restraining use of the impugned product “Spinpact” or any other product infringing its Indian Patent bearing No. IN244759 (“IN759”) titled as “FIBER BUNDLE CONCENTRATING IN SPINNING MACHINE” as also another Indian Patent bearing no. IN394883 (“IN883”) titled as “SUCTION DUCT FOR SPINNING MACHINE”, amongst other ancillary reliefs.

In the hearing for Interim Injunction, the Plaintiff’s counsel stated that it will not be pressing for any relief(s) in relation to IN883 in light of the statement made by the Defendant in its written statement wherein the Defendant had stated that it has stopped manufacture and supply of the product allegedly infringing IN883, and is now using an alternate technology. Thus, the entire claim of the Plaintiff was centred around infringement of IN759.

IN759 IN BRIEF

The Plaintiff’s invention relates to a fibre bundle concentrating apparatus located downstream of a draft machine of a spinning frame and concentrates fibre bundles drafted by the draft machine. It is the case of the plaintiff that IN759 has solved the technical problem of accumulation of cotton fly in the gap between the bottom nip roller, around which a perforated belt is bound, and the suction part. The said accumulation of cotton fly hinders the spinning of the machine and decreases productivity as it requires a lot of man hours to clean the parts. IN759 solves the aforesaid problem by providing grooves having depth greater than or equal to 0.04mm on the bottom nip roller. The said grooves at the gap between the nip roller and suction part prevent cotton fly from entering the gap due to increase of pressure. Also, even if cotton fly does enter the gap, the same gets caught by the grooves and gets easily removed therefrom, hence avoiding its accumulation. Resultantly, the cotton yarn is produced with less fuzzing, and hence no man hours are required to be wasted on the cleaning.

PLAINTIFF’S CASE

The Plaintiff asserted that all the claims of IN759, especially the independent claim of grooves on the bottom nip roller with depth greater than or equal to 0.04mm (being 0.15mm in Spinpact), have been implemented by the Defendant in Spinpact, and the same amounts to clear infringement of the plaintiff’s patent in IN759. The Plaintiff asserted that infringement is apparent from the fact that the Defendant has not raised the defence of non-implementation of the technology disclosed in IN759 and hence use of the same by the Defendant must be deemed admitted.

Also, it was brought to the Court’s attention that the non-disclosure of an alternate technology in relation to IN 759 by the Defendant falls foul of the requirement of raising a claim of non-infringement as stipulated under Rule 3(B)(vi)7 of the Delhi High Court Patent Rules, 2022.

The Plaintiff relied on various judicial precedents[1] to argue that it is a settled principle of law that in order to raise a question on the validity of a patent, the burden of proof is on the Defendant, and the Defendant is required to “clear the way” either by filing a pre-grant or a post-grant opposition, or by filing a revocation petition.

The Plaintiff also asserted that:

·       there must be a link between the problem subsisting at the time of the prior art which the same claims to solve using the disclosed technology, i.e., the solution, and the problem and solution in the patent at hand, to prove lack of inventive step.

·       only if any of the prior arts discloses a problem which existed at that time and for which an obvious solution was encompassed herein, can a suit patent solving a similar problem be defeated on the claim of obviousness. Since none of the prior arts claim to solve the problem of accumulation of cotton fly between the nip roller and the suction part using grooves with depth greater than or equal to 0.04mm on the bottom nip roller, IN759 cannot be defeated on the ground of obviousness.

·       mosaicking of prior arts is not permissible in order to undermine the novelty of an invention, rather such complicated combination might itself be a proof of invention. To challenge novelty, a clear and specific disclosure of an invention must be present in prior arts, however, the Defendant herein has claimed that the combined teachings of the prior published documents and common general knowledge existing prior to the priority date would make the technology in IN759 obvious to a person skilled in the art. This, in itself, proves that the prior arts must be combined in a complicated fashion to arrive at the technology in IN759 and hence, nullifies the claim of lack of novelty and inventive step made by the defendant.

Lastly, the Plaintiff pleaded that the Defendant has manufactured a vast number of Spinpact models during the subsistence of IN759 which it would be able to deal in/ monetize post the expiry thereof, thus the Plaintiff is likely to suffer irreparable harm, loss and injury to its intellectual property rights at the hands of the Defendant, which cannot be compensated financially through costs and thus, a case for grant of an interim injunction is made out.

DEFENDANT’S CASE

The Defendant argued that IN759 lacked novelty and inventive step, citing prior art using similar grooves. The Defendant asserted that the technology involved in IN759 lacks novelty and inventive step and was conventionally known and already in public domain since it was disclosed in the prior arts. The Defendant also claimed that it had acquired the know-how through a German company and developed the technology prior to the Plaintiff’s IN759 patent. 

With respect to “clearing the way”, the Defendant argued that the principle of “clearing the way” only comes into effect to determine the balance of convenience, prior whereto the burden is on the Plaintiff to establish both a prima facie case, as also irreparable harm, loss and injury. Also, as stipulated in Section 64(1)13 of the Act, the said lack of “clearing the way” has no impact on the credibility of the Defendant’s challenge to the validity of the patent, for which grant of the same does not create any presumption of validity. The Defendant argued that IN 759 is liable to be revoked for being obvious and because it lacks any inventive step.

The Defendant also argued that while mosaicking together of individual cited documents is not permissible, if it can be shown that a skilled person, without any extraordinary imagination and outside of an inventive capacity would combine the teachings of different prior arts, such a mosaic is not barred.

Further, the Defendant’s counsel submitted that IN759 is liable to be revoked under Section 64(1)(e)of the Act for lack of novelty as well, particularly, since the Plaintiff’s own machines used bottom nip rollers with grooves in the product RX240 prior to the date of priority of IN759. It was argued that the onus was on the Plaintiff to produce detailed drawings and technical literature with respect to the product RX240 and that the Plaintiff suppressed/not disclosed  in the plaint.

Also, the Defendant submitted that considering IN759 was expiring on May 24, 2025, and the Defendant has been selling Spinpact since as far back as 2018, therefore the balance of convenience does not tilt in favour of the Plaintiff for grant of an interim injunction. The Defendant also prayed for dismissal of the application on the ground that if the measure of damages recoverable in common law would be an adequate remedy after the outcome of the lis and it appears that the Defendant would be in financial position to pay such damages, no irreparable harm, loss and injury would be caused to the Plaintiff.

COURT’S DECISION

The Hon’ble Court relied upon Section 53 of the Patents Act which provides that patent protection ceases upon expiry. The Court opined that “this Court being bound by the stipulations of the Statute/ Act, granting an injunction of the nature sought by the plaintiff herein, and that too at this stage, when the life/ term/ period of the patent IN759 has already expired, would lead to anomalies and in fact, be futile. This Court cannot grant anything by way of the reliefs sought for in the present proceedings, particularly, since it would be beyond the scope thereof and/ or will be what is neither statutorily available nor permissible.”.

The Hon’ble Court held that upon expiry of the patent on May 24, 2025, it is freely available in public domain and everyone including the Defendant herein, is/ will be free to use, manufacture, offer, sell, or like, IN759 in any form. Thus, the Plaintiff has lost its right to enforce the said IN759 after the expiry of the limited/ mandatory period of twenty years. The Hon’ble Court further observed that “as far as the apprehensions of the Plaintiff in relation to Spinpact products manufactured during the existence of IN759 are concerned, the same, in the opinion of this Court, can be compensated through costs at the final determination of the pending lis”.

The Hon’ble Court was of the view that all that is left for adjudication inter se the parties is whether the Defendant is guilty of infringing IN759 of the Plaintiff during its subsistence and if so, what are the financial implications and any other relief as may be available to the Plaintiff, all of which are subject to trial, for which evidence will have to be led by both parties involved. Consequently, the Hon’ble Court observed that even though the Plaintiff may have a prima facie case with the balance of convenience in its favour and a likelihood of irreparable harm, loss and injury to it, the fact of expiry of the patent of the Plaintiff is a crucial factor which would decide the fate of the present application.

Therefore the Hon’ble Court held that since IN759 has already expired on May 24, 2025, the Hon’ble Court is precluded from passing any effective order restraining infringement of the said patent. Significantly, the Hon’ble Court also referred to the decision passed by the Hon’ble Supreme Court’s in Novartis AG v. Natco Pharma (2024)[2], where the court refused to adjudicate injunction once the patent had expired.

However, in the interest of justice, the Hon’ble Court directed the Defendant to place on record financial statements and records, in a sealed cover, since and from when it has been dealing with Spinpact, containing the alleged features of IN759, including the products it has manufactured, but is yet to sell, upto the date of expiry of IN759, i.e. 24.05.2025, within a period of eight weeks. 

CONCLUSION

The present decision underscores the importance of timely enforcement of patent rights against third parties. It also highlights that while patent rights may expire, it does not prevent the Patentee from claiming past damages assuring that not all is lost with the expiry of the patent. It would be interesting to see how this jurisprudence may evolve in the coming times with the growing patent disputes in India.

References:

[1] Strix Ltd. v. Maharaja Appliances Ltd. [2009 SCC OnLine Del 2825]; Eisai Co. Ltd. & Anr. v. Satish Reddy & Anr. [2019:DHC:2476]

[2] SLP(C) No.16237/2024