B. Braun Melsungen AG v Rishi Baid (2009)

Summary

“The plaintiffs seeks an ad interim injunction restraining the defendants from making, selling, distributing, advertising, exporting, offering for sale and in any other manner dealing in or with safety I.V. catheters / cannulae or other device or apparatus that infringes the subject matter of the plaintiffs’ registered patent number 210062.” (para 1) The plaintiffs’ case was that “Poly Medicure Limited has been manufacturing a basic I.V. catheter bearing the brand name ‘ACCUCATH’ for and on behalf of the plaintiff No.1 under an exclusive agreement” (para 9), and that the defendants’ sample “contained all the elements of claim 28 of Patent No. 210062.” (para 13) The defendants submitted that “The plaintiffs have suppressed material facts” and that “The grant of the patent in favour of the plaintiff No. 1 is coloured by fraud” (para 25), and “the defendants have preferred a counter- claim and sought the revocation of the plaintiffs’ patent.” (para 38)

The Court held that “the plaintiffs are not entitled to an ad interim injunction as prayed for by them.” “In the present case the patent is a recent one and, prima facie, there is a serious challenge to the validity of the patent.” (para 41) It found that the plaintiffs “did not come clean with the Court” (para 42), and that the dates of grant and amendment raised “another circumstance which raises serious doubts.” (para 43) “Consequently, the present prayer for an ad interim injunction made by the plaintiffs is rejected. The plaintiffs, however, can be protected as was done in the case of Bilcare Limited (supra) by directing the defendants to keep accounts of the manufacture and sales of the safety I.V. cannula in question during the pendency of the suit” (para 44)

What the court decided

1. Registration and injunction. “It is clear that the registration of the patent per se does not” “entitle the plaintiffs to an injunction. The defendants’ case is also to be examined and it is only after the entire case as a whole is considered that the Court can come to a decision as to whether the plaintiffs are entitled to an injunction or not.” (para 41)
2. A recent patent seriously challenged. “In the present case the patent is a recent one and, prima facie, there is a serious challenge to the validity of the patent. This has been amply demonstrated by the learned counsel for the defendants in the course of his arguments noted above.” (para 41)
3. Revocation pleas as defences. “Sub- section (1) stipulates that in any suit for infringement of a patent every ground on which it may be revoked under section 64 shall be available as a ground for defence. Therefore, all the pleas which may be taken for seeking the revocation of a patent are also available as a defence in an infringement suit.” (para 38) “I have also noted that the revocation of a patent can be sought under Section 64 of the Patents Act, 1970 by a defendant in an infringement suit by way of a counter-claim. The defendants have already preferred such a counter-claim.” (paras 38, 41)
4. Prior art and a crowded field. “The question of validity of the plaintiffs’ Patent No. 210062 is not free from doubt at this prima facie stage. There are more reasons than one for entertaining such doubts. One of the most important reasons is the existence of prior art.” “Prima facie, the defendants have been able to show that, first of all, the field of I.V. catheters is a crowded one. Secondly, needle guards, in one form or the other, have been used for decades by several companies. Thirdly, the” “defendants’ safety I.V. catheter/ cannula is somewhat different from the plaintiffs’ Patent No. 210062.” (para 41)
5. The design principles applied. Of Niky Tasha India v Faridabad Gas Gadgets (1984), the Court recorded that “the Division Bench further observed that the rule with regard to grant of interlocutory injunction is that the Court will not grant such an injunction unless it is satisfied that there is a real probability of the plaintiff succeeding in the trial of the suit” and held: “It is clear that the case before the Court in Niky Tasha India Pvt. Ltd (supra) was one under the Designs Act but the principles would be equally applicable to the present case which is under the Patents Act.” (para 40)
6. Suppression in the plaint. “Another important factor which goes against the plaintiffs is that they did not come clean with the Court because there is no reference in the plaint of the fact that the plaintiffs were already aware that the defendants have started manufacturing and selling safety I.V catheters/ cannulae. The audit reports referred to above, prima facie, specifically point in this direction.” (para 42)
7. The date of grant. “The rival contentions with regard to the alleged dubious manner in which the patent was granted in favour of the plaintiff No.1 on 17.09.2007 when the application for amendment itself was made on 19.09.2007 is another circumstance which raises serious doubts.” “That, however, is a circumstance which will have to be established as a fact in the course of trial. For the present, what is necessary is that the allegation raised by the defendants cannot be thrown out at the threshold.” (para 43)
8. Disposition and accounts. “For all these reasons, I hold that the plaintiffs have not been able to establish a prima facie case nor is the balance of convenience in favour of grant of an ad interim injunction in their favour.” Following Bilcare Ltd v Amartara Pvt Ltd, the Court directed “the defendants to keep accounts of the manufacture and sales of the safety I.V. cannula in question during the pendency of the suit and to make the same available to the Court as and when directed by it.” “With these observations, this application is dismissed.” (para 44)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 27 October 2026.