Delhi High Court analyses circumstances for grant of interim injunction

In Jaidka v Mittal (IA 15260/2010 in CS (OS) No 1900/2010, May 9 2014) the Delhi High Court had to decide a suit for permanent injunction brought by Sandeep Jaidka to prevent infringement of his registered patent (231895). 

Facts
The suit was filed against Mukesh Mittal (the first defendant), the owner of a four-dimensional (4D) cinema located in Rohini, New Delhi, and the manufacturer and supplier of 4D theatre equipment (the second defendant), who allegedly supplied infringing 4D theatre equipment to Mittal. Under an order of August 27 2012, the suit proceeded ex parte with regard to Mittal on account of non-appearance. Jaidka's patent pertained to a device which enabled a 4D cinema experience by producing heating, cooling and aromatic effects corresponding to the scene of the film. The patent was granted on March 13 2009 by the Indian Patent Office. In response to the suit filed by Jaidka, the second defendant filed a counterclaim for revocation of the patent. The revocation claim was filed on the grounds that the patent was not an invention in light of the technology prevailing in the state of the art, and that Jaidka had not put the patented technology to industrial use as mandated by the act. During the pendency of the suit, Jaidka filed an interim application for temporary injunction.

Test for interim injunction in patent infringement suits
The courts have laid down the general principle for grant of an interim injunction, especially in relation to patent infringement suits, in several judgments. The test is that if the plaintiff can prove that there is a serious question to be tried and the defence of patent invalidity raised by the defendant is not credible or is weak, the court can conveniently grant an interim injunction in favour of the plaintiff. However, if the defendant's defence of patent invalidity is found to be credible, the interim injunction may be refused on the grounds of a credible and tenable defence. Thus, essentially the decision to grant or refuse an interim injunction is a question of fact.

Prima facie case of infringement
The first issue to be decided by the court was whether Jaidka was entitled to a temporary injunction in light of the fact that the second defendant had challenged the validity of the patent that Jaidka sought to enforce. In this regard, the court observed that Jaidka had failed to file an affidavit from a scientific or technical expert establishing that the second defendant's equipment had the same technical features as Jaidka's patent. Further, Jaidka was unable to refute the second defendant's contention that the inventive concept disclosed in the patent already formed part of the prior art. The court also observed that Jaidka had merely shown that the second defendant's equipment produced the same effects (eg, wind, smells, rain) without showing that the second defendant's equipment produced such results using substantially the same means as disclosed in the patent. Thus, the court held that Jaidka was unable to establish a prima facie case of infringement.

Non-use of patent in India
The second defendant also alleged that the patent was not used by Jaidka and thus the interim injunction should not be granted. Thus, a novel issue to be determined in this case was whether non-use of a patent constituted grounds to deny an interim injunction in a patent infringement suit. The court agreed with the second defendant that Jaidka did not use the patent on a commercial scale in line with the Form 27 that he had filed with the Indian Patent Office. The filed Form 27 disclosed no details of the licences that he claimed he had issued.

The court also considered an admission made by Jaidka as part of a cross-examination in another suit for infringement of the same patent against Rohit Kapur and another (CS (OS) 1035/2010). Thus, the court held that the patent was not used by Jaidka based on that admission.

Finally, the court referred to the Delhi High Court's judgment in Huemer v New Yash Engineers (AIR 1997 Del 79), in which it was held that a plaintiff which has a registered patent in India but has not used such patent in India cannot seek a temporary injunction against the defendant. Therefore, the court deined the interim injunction. The court also considered that major investment had been made by the second defendant in manufacturing and supplying equipment since 2003. Thus, if the court had passed an injunction order at an interim stage, the injury caused to the second defendant would be far greater than any injury caused to Jaidka, since he had yet to exploit his patented product commercially. The court also imposed certain conditions on the second defendant, including furnishing accounts.

Comment
This case illustrates that if a patentee has not put its patent to industrial use in India, it may not be entitled to an interim injunction. Many patents granted in India are not actually worked. Thus, the risk of the court denying an interim injunction, which is crucial in patent infringement suits, could encourage patentees to work their inventions in India. It will be interesting to see whether the courts continue to consider non-use of patent as grounds to deny interim injunctions in patent infringement suits.