A patentee can sue another patentee for Patent infringement
Introduction:
The present case concerns a patent infringement dispute between Hindustan Lever Limited (HLL) and the defendants Mr. Lalit Wadhwa and Eureka Forbes Ltd. (Defendant No. 2). The plaintiff alleged that the defendants infringed its patent concerning a gravity-fed water purification system and sought remedies including permanent injunction, rendition of accounts, and damages. The case also involved the question of whether one patentee can sue another patentee for infringement, jurisdictional challenges, and whether a company officer could be impleaded in the suit.
Detailed Factual Background:
HLL claimed to be engaged in manufacturing various consumer products and had developed a gravity-fed water purification system in 2002, which ensured high microbiological purity in drinking water. HLL filed an Indian patent application No. 539/MUM/2003 in June 2002, leading to the grant of patent No. 198316 on January 9, 2006. The plaintiff alleged that Defendant No. 2, Eureka Forbes Ltd., launched a competing water purification system under the brand name "Forbes Aquasure" around September 2004, which allegedly infringed the substance of HLL’s patent.
The plaintiff also alleged that Defendant No. 3 (non-party to this application) had filed for its patent on March 29, 2004, which was subsequently granted. However, HLL argued that the defendant's product still infringed its earlier patented invention.
Detailed Procedural Background:
The plaintiff filed a suit for patent infringement before the Delhi High Court seeking reliefs under Sections 48 and 108 of the Patents Act, 1970. The defendants responded by filing two interlocutory applications: one under Order 7 Rule 11 CPC for rejection of the plaint on the grounds of lack of cause of action, territorial jurisdiction, and absence of proper authorization; and another under Order 1 Rule 10 CPC seeking deletion of Defendant No. 1, Mr. Lalit Wadhwa, on the ground that he was neither a necessary nor a proper party.
Issues Involved in the Case
The key issues were whether a patentee can sue another patentee for patent infringement?
Detailed Submission of Parties:
The defendants contended that the suit should be dismissed for non-disclosure of a cause of action since one patentee cannot sue another for infringement. They also argued that the plaintiff had no sales in Delhi, thereby ousting the territorial jurisdiction of the Delhi High Court. Further, they submitted that Defendant No. 1, Mr. Lalit Wadhwa, was impleaded only to create jurisdiction and to obtain an interim injunction without proper notice to the defendants.
The plaintiff argued that a patentee's right is exclusionary, enabling it to prevent even another patentee from infringing its patent. It contended that Section 48 of the Patents Act grants a right to stop others from making, using, or selling the patented product regardless of their patent status. The plaintiff further asserted that infringement occurred in Delhi as the impugned product was sold there, giving the Court territorial jurisdiction. As to Defendant No. 1, the plaintiff invoked Section 124 of the Patents Act, which imposes liability on persons in charge of the company at the time of infringement.
Detailed Discussion on Judgments along with their Citations and Context:
The plaintiff cited "Patents for Chemicals, Pharmaceuticals, and Biotechnology" by Philip W. Grubb, where it is explained that patents grant exclusionary rights, i.e., they do not allow patentees to practice the invention if doing so would infringe another patent.The plaintiff relied on Alert India v. Naveen Plastics & Anr., 1997 PTC (17) 15, which held that a prior proprietor of a design copyright has a preferential right over a subsequent registrant.The defendants relied on Tobu Enterprises Pvt. Ltd. v. Megha Enterprises, 1983 PTC 359, Indo Asahi Glass Co. Ltd. v. Jai Mata Rolled Glass Ltd. and Anr., 1995 (33) DRJ 317 (Del), and S.S. Products of India v. Star Plast, 2001 (21) PTC 835 (Del), to argue that courts have refused interim injunctions where the defendant also holds a design registration.The plaintiff countered these citations by distinguishing that those decisions were under the Designs Act, 1911 and not under the Patents Act, 1970, and relied on Pfizer Products Inc. v. Rajesh Chopra, (2006) 32 PTC 301 (Del), L.G. Corporation v. Intermarket Electroplasters Pvt. Ltd., (2006) 32 PTC 429 (Del), and S. Oliver Bernd Freier GmbH & Co. K.G. v. Karni Enterprises, (2006) 33 PTC 574 (Del), to argue that sale within Delhi constituted part of the cause of action.
Detailed Reasoning and Analysis of Judge:
The Court held that a patentee’s right is indeed exclusionary, as clarified by Philip W. Grubb. Section 48 grants a right to prevent third parties from infringing the patented product irrespective of the defendant’s patent status. The Court rejected the argument that a suit for patent infringement is not maintainable against another patentee, clarifying that Section 107 allows the defendant to raise any grounds for revocation under Section 64 as a defense, but this does not bar the suit itself.On jurisdiction, the Court held that the cause of action arose in Delhi as the impugned product was admittedly being sold there, satisfying the requirement under Section 20(c) of the CPC. As for impleadment of Defendant No. 1, the Court found that Section 124, which imposes penal liability on persons in charge of a company, did not apply in civil infringement cases. Since no specific role was attributed to Mr. Wadhwa in the alleged infringement, the Court held that he was neither a necessary nor a proper party.
Final Decision:
The Court dismissed the defendant’s application under Order 7 Rule 11 CPC and held that the suit disclosed a valid cause of action, was maintainable, and the Delhi High Court had territorial jurisdiction. However, the Court allowed the application under Order 1 Rule 10 CPC and deleted Defendant No. 1, Mr. Lalit Wadhwa, from the array of parties.
Law Settled in this Case:
The Court affirmed that a patentee can sue another patentee for infringement, as patents confer exclusionary rights. The judgment clarified that the existence of a defendant’s patent does not immunize it from infringement actions. Further, it held that sales in a jurisdiction provide sufficient cause of action for territorial jurisdiction.
Case Title: Hindustan Lever Limited Vs Mr. Lalit Wadhwa and Another
Date of Order: 10 August 2007
Case No.: CS(OS) No. 1707/2006
Neutral Citation: (2007) 35 PTC 377
Name of Court: High Court of Delhi
Name of Judge: Hon'ble Justice Vipin Sanghi
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] ,High Court of Delhi
