Sotefin SA v Indraprastha Cancer Society and Research Center (2022)

Summary

“The Plaintiff, on the basis of an exclusive license for right of use and exploitation in its favour, has filed the present suit seeking permanent injunction for restraining infringement of Indian Patent 214088 dated 13th March 2002 titled ‘Carriage for the horizontal transfer of motor vehicles in automatic mechanical car parks’” (para 1), which “is expiring on 13th March 2022” (para 3). “On investigation, it was found that Defendant No. 1 had placed an order of supply and import of 14 ‘Smart Dollies’ for the project at Defendant No. 2’s parking system from a company named - Nanjing Eli Parking Equipment Manufacturing Co. Ltd., located in located in Nanjing, China” (para 7). “On 15th September, 2021, after hearing the counsels, it was deemed appropriate to seek the opinion of scientific advisers, and accordingly, the Director of Indian Institute of Technology, Delhi was directed to appoint experts in the relevant field to assist the Court” (para 9), and “it is revealed that 17 of the 19 elements of Claim No. 1 of the suit patent were found in Smart Dollies.” (para 25)

The Court held that “the Plaintiff has successfully established a strong prima facie case that the Defendants’ Smart Dollies are infringing the suit patent.” (para 41) It held that “the protection available under law is no less at the time when the patent protection is nearing its end” (para 44), that “the infringing goods would not become kosher on expiry of the patent” (para 47), and that “the Chinese patent relied upon by the Defendant, does not in any manner give them protection under Section 107A(b) of the Act” (para 69). “The statutory rights of the patentee cannot be defeated, just because the Plaintiff may be entitled to damages at the end of trial.” (para 71) “In light of the above, the application is allowed and the Defendants are restrained from making, selling, exporting or from offering for sale, importing or in any manner directly or indirectly dealing with infringing products viz. Smart Dollies/ Automatic parking system that infringes the suit patent IN – 214088, till the pendency of the present suit.” (para 73)

What the court decided

1. Scope of the enquiry. “At the onset, it is noticed that there is no challenge laid out by any of the parties on validity of the suit patent. Thus, the scope of inquiry is confined to the aspect of infringement of suit patent alone.” (para 15)
2. Intention and onus. “Infringement is to be adjudged objectively and Defendant’s intention may not be a material criterion to determine this question. However, intent to infringe can be a relevant and significant factor for the purpose of deciding the relief of injunction to restrain infringement.” (para 18) “The onus of proving infringement lies on the patentee and thus for seeking injunction, Plaintiff has to on prima facie basis, demonstrate that the Smart Dollies are infringing its patent.” (paras 18, 23)
3. Party expert and scientific advisors. “The aforenoted expert opinion was made by comparing the claims of the suit patent with pictures of the Smart Dollies, as Mr. Ashwini Kumar did not have access to Smart Dollies. For this reason, reliance on his report has to be circumspect. Nonetheless, the court has benefit of the opinion and report rendered by independent scientific advisors, appointed vide an earlier order. Their opinion, relied upon by both parties for different reasons, narrows down the controversy considerably.” (para 24)
4. Essential elements. “There is no quarrel on the proposition that all the essential elements of the suit patents claimed are required to be found in the Smart Dollies in order to establish an infringement.” (para 28) “However, the emphasis must be on mapping of ’essential elements’.” (para 29) “On comparison, there can be a case of non-literal infringement, where each and every component of patent specification is not found in the infringing products. In other words, all the elements of a claim may not entirely correspond in the infringing product, as has been pointed by the experts, in the instant case. However, it does not inevitably mean that there can be no infringement. It is the pith and marrow of the invention claimed that is required to be looked into, and we do not have to get lost into the detailed specifications and do a meticulous verbal analysis which the parties have engaged into the Court.” (paras 28–29, 32)
5. The claim as a whole. “Claims define the scope of the invention, for which protection is claimed by a patentee. As per Section 10(4) of the Act, specifications of a patent should fully and particularly describe the invention. The specifications should disclose the invention and support the features narrated in the claims. The construction of a claim has to be done as a whole, to determine its true scope and to give it an effective meaning. The specifications which describe the invention have to be read from the point of view of the notional person acquainted with the language of the patent claim.” (para 30)
6. Purposive construction and equivalence. “For determining the question of infringement, it must be borne in mind that the non-essential or trifling variations or additions in the product would not be germane, so long as the substance of the invention is found to be copied. Pure literal construction is not be adopted, rather, doctrine of purposive construction should be applied. The court shall also apply Doctrine of Equivalence to examine if the substituted element in the infringing product does the same work, in substantially the same way, to accomplish substantially the same result.” The Court then recorded that in Raj Parkash v Mangat Ram Chowdhry “a division bench of this court held that a minor variation cannot be treated as a shield from piracy” (para 33)
7. The two missing elements. Of hinging: “The function of elbow joint is covered under the function of a shoulder joint as well. Keeping the analogy of shoulder and elbow joint in mind, although the shoulder joint - hinges give extra movement, nevertheless, this additional invention incorporated in the Smart Dollies cannot be construed to be an essential element, which could render the Smart Dollies to be substantially different from that of the Plaintiff.” (para 37) “Prima facie, this indicates to the Court that the hinge element - not found in the Smart Dollies - is not a substantial difference in the functionality, and it achieves substantially the same result in substantially the same way, as claimed in suit patent.” (para 38) Of immobilization of the rear wheels: “This suggests that the feature of immobilization at two sides does not have material effect upon the working of the invention.” (paras 37–39)
8. Prima facie case. “The Reports indicate identical input/ out functions and identical method of operation in Smart Dollies. Thus, prima facie, it manifests that this variation is insignificant, and the substance of the suit patent has been copied.” (para 40) “In light of the above discussion, and keeping in view that 17 of the 19 elements of Claim No. 1 of the suit patent were found to subsist in the infringing products, the Plaintiff has successfully established a strong prima facie case that the Defendants’ Smart Dollies are infringing the suit patent.” (paras 40–41)
9. An independent claim. “It is also to be noted that mapping of one of the independent Claim No.1 is sufficient to constitute infringement, even if the dependant claims may differ, without going into the mapping of the remaining, dependent claims.” (para 42)
10. Protection near expiry. “In the opinion of the Court, the protection available under law is no less at the time when the patent protection is nearing its end, than what is afforded when the entire term is available.” “Sections 48 and 108 of the Act would apply throughout the life of the patent without exception. Section 53(4) uses the expression ‘on expiry of the term of patent, the subject matter covered by the suit patent shall not be entitled to any protection’ which, by necessary corollary, affords protection for the entire term of the patent.” “Hence, if a patentee approaches for enforcement of its rights any time during the term of an subsisting patent, irrespective of the length of balance period, it would be the duty of the Court to enforce the same, giving full benefit of Sections 48 and 108 and other provisions of law, without exception.” (para 44)
11. Infringing goods after expiry. “In the opinion of the court, if infringement has occurred during the lifetime of the patent, the infringing goods would not become kosher on expiry of the patent. Plaintiff would be entitled to seek restrain on Smart Dollies which were made or imported at a time when the suit patent was valid and subsisting.” (para 47) “Therefore, on a prima facie basis, this court is in agreement with the views expressed by the foreign courts, which suggest that any product which is infringing, during the term of the patent, would continue to be tainted. The infringement cannot get dissolved with the lapse of the patent. Undoubtedly, the monopoly of the patentee would stand extinguished with the expiry of the term, but the infringement that has occurred during the lifetime of the patent would not fade away.” (paras 47, 52)
12. ‘Patented products’ in section 107A(b). “Thus, the term ‘patented product’ found in Section 107A(b) has to be understood with reference to ‘patented article’ read with definition of ‘patent’ and ‘invention’ as per Section 2 (1)(o), (m), and (j) respectively. On a cumulative reading of the aforesaid definitions, it means that patented products covered under Section 107A(b) would include only those products which are patented under the Indian Patents regime.” (para 62)
13. ‘Duly authorized under the law’. “The ‘patented product’ so imported to India, which would fall within the ambit of Section 107A(b) of the Act, can only be construed to mean such products which are manufactured with the authority of the patentee or by way of a compulsory license granted under law.” “It could apply to importation of the Indian patented product, manufactured under a compulsorily license in the country of origin.” (para 64) “Pertinently, the reference to law, in the provision, undoubtedly, has to be to the Indian law.” “Therefore, in the opinion of the court, the foreign patent cited by Defendant No. 1 in the name of the third party, cannot be treated to be ‘duly authorized under law’.” (paras 64–65)
14. International exhaustion. “Besides, the language of the afore-noted provision, when contrasted with Section 30(3) of the Trademarks Act, 1999, makes it clear that the doctrine of international exhaustion, as found in the Trademarks Act, is not intended to be incorporated under the Patents Act.” “Therefore, it would not be correct to argue that the aforesaid provision allows parallel imports as contended by Defendants No. 1 & 2.” (para 67)
15. The foreign manufacturer and its patent. “Further, importing a product that infringes an existing patent is liable to be proceeded against under Section 48 of the Act, and therefore, it is immaterial whether the foreign patent holder has been impleaded or not.” (para 68) “Once the experts found the claim 1 elements in Smart Dollies, the onus of prove shifted on to the Defendants and it was absolutely essential for them to demonstrate that indeed the Smart Dollies was the subject matter of the Nanjing patent. No such attempt has been made in that regard whatsoever.” (paras 68–69)
16. Damages and injunction. “Regardless, to accept the proposition of Mr. Saikrishna or Mr. Malhotra that since award of damages is an adequate remedy, injunction should be refused, is not a correct approach. Accepting such a proposition would defeat the monopoly rights of the patentee which entitle it to prevent third-parties from importing an infringing product.” (para 71) “The fact that the damages can be awarded at a final stage, is not an absolute bar for the Court to deny an injunction.” “They were aware of the Plaintiff’s suit patent, yet they proceeded to import the Smart Dollies.” (paras 71–72)
17. Procedure. Disposition. “In light of the above, the application is allowed and the Defendants are restrained from making, selling, exporting or from offering for sale, importing or in any manner directly or indirectly dealing with infringing products viz. Smart Dollies/ Automatic parking system that infringes the suit patent IN – 214088, till the pendency of the present suit.” (para 73)

Subsequent treatment

• Distinguished — In Ferring BV v Precise Bio Pharma (2022) the Delhi High Court held that the judgments relied on by the plaintiffs, this one among them, “are distinguishable on facts inasmuch as in the said cases the patents had expired or lapsed and the issue was regarding the rights of a patentee during the period of validity of the patents” (para 12).
• Followed — In Nocil v Finorchem (2026) the Calcutta High Court, relying on “Sotefin SA v. Indraprasstha Cancer Society” and “Raj Parkash v. Mangat Ram Chowdhry”, held that “The burden of proof to show that the petitioner’s patents are most likely to be revoked is on the respondent no. 1.” (para 19)