On August 1, 2025, the Delhi High Court, in Aquestia Limited vs Automat Industries Private Limited and Ors. (CS (COMM) 860/2024, I.A. 41112/2024 & I.A. 4591/2025), established a prima facie case of infringement against the defendants for not only selling the infringing products in India, but also exporting the same. The Court found that this act would cause irreparable harm and injury and favoured the plaintiff in granting the interim injunction.
Factual Matrix
The present suit was filed by Aquestia seeking a permanent injunction restraining the defendants from infringing their registered patent No. IN 427050, titled as “A Fluid Control Valve” along with other ancillary reliefs.
The defendant raised a defence that their impugned product ‘Hydromat’ was covered by Patent IN’536, which was granted in their favour. Therefore, their product did not infringe the suit patent. Additionally, the defendant argued that the correct approach was to compare a ‘product-to-product’ to determine the infringement. Contrarily, the plaintiff argued that the comparison should be between the infringing product and the patent (claims).
On ‘Product-To-Product Comparison’ for Infringement
The Court observed that for consideration of alleged infringement, it is required that the claimed product be mapped with the infringing product. The defendant argued that there was no commonality between the suit patent and the defendants’ patented product, and therefore, no case of infringement arises, either literally or by purposive construction. The defendant argued that non-infringement was based on a ‘product-to-product comparison’, i.e., comparing the plaintiff’s product to that of the defendant’s product.
The Court ruled that the defendants’ approach in placing reliance on a ‘product-to-product comparison’ rather than a ‘claim-to-product’ analysis is untenable. The correct approach is to compare the claims of the suit patent with the impugned product. The Court cited the ruling in Mold Tek Packaging Ltd. vs Pronton Plast Pack (P) Ltd., where the Division Bench held that:
“39. Whether infringement has, or has not, taken place in a particular instance, has to be decided on the basis of a mapping between the product of the defendant and the complete specifications of the suit patent. Mr. Mehta is correct in his submission that the comparison has to be product to patent and not product to product. What is prohibited, by Section 48, is the making, using, offering for sale, selling or importing of the product which forms ‘subject matter of” the patents held by another. In order to ascertain whether this right has been breached, therefore, the Court has to first ascertain the subject matter of the suit patent. This subject matter is to be found in the complete specifications of the suit patent. In other words, the Court has to compare the goods of the defendant with the subject matter of the suit patent, as is contained in the complete specifications of the suit patent, in order to ascertain whether infringement has taken place. The comparison has, therefore, to be product-to-patent, and not product-to-product.” [Emphasis added]
Based on this, the Court ruled that the ‘product-to-product comparison’ in an infringement analysis, as argued by the defendant, is not tenable. In infringement analysis, the comparison must be between a product and a patent and not between products.
On Grant of a Patent to Defendant
The Court junked Automat’s defence that their own patent protected their product. Citing Hindustan Lever Limited vs Mr. Lalit Wadhwa and Anr., where a Co-ordinate Bench of this Court held that the mere grant of a patent in favour of the defendant does not constitute a valid defence in a suit for infringement of the plaintiff’s patent, the Court concluded that a patent grant does not preclude infringement of another’s patent. The Court observed that the grant of a patent merely confers a negative right under Section 48 of the Patents Act, 1970, to exclude others from making, using, or selling the invention, and does not ipso facto establish that the defendant’s product does not infringe the plaintiff’s patent.
Relying on the ruling in Hindustan Lever, the Court observed that the mere grant of a patent in favour of the defendant does not constitute a valid defence in a suit for infringement of the plaintiff’s patent, the Court ruled that “I find no merit in the aforesaid submission of the defendant that no action for infringement of patent can lie against another patentee.” This clearly means that the grant of a patent to the defendant gives no immunity or defence in an action for infringement of the plaintiff’s patent. The Court also agreed with the statement of the law in the treatise of Philip W. Grubb, wherein he states that the right of a patentee is an “exclusionary right”.
Decision of the Court
The Court found that the defendants were not only selling infringing products in India but also exporting them, which would cause irreparable harm and injury. The Court, after appreciating the evidence submitted by the plaintiff, held that a prima facie case of infringement was made out by the plaintiff. The Court also ruled that the balance of convenience was in favour of the plaintiff and against the defendants. The Court also observed that the reliance placed by the defendants on the judgment in Boehringer is misplaced, as in the said case, the Court was dealing with an issue relating to public health and access to medicine at an affordable price, which is not the case in this suit. Consequently, the Court granted an interim injunction, restraining Automat from manufacturing, selling, or exporting the infringing products.
Conclusion
This case reiterated that the mere grant of a patent in favour of the defendant does not constitute a valid defence in a suit for infringement of the plaintiff’s patent. The ‘product-to-product comparison’ in an infringement analysis is not tenable. The Court reaffirmed that whether infringement has, or has not, taken place in a particular instance had to be decided based on a mapping between the product of the defendant and the complete specifications of the suit patent. In this case, the correct approach is to compare the claims of the suit patent with the impugned product.
The comparison must be between ‘product’ and ‘patent.’ The plaintiff’s claim mapping in this case, prima facie, establishes that the defendant’s product falls within the ambit of the plaintiff’s claims (claim 90). The Court found that the alleged Automat’s “Hydromat” valves infringed Aquestia’s patent for a fluid control valve as the features of the Hydromat valves matched the novel aspects of the plaintiff’s patent claims. The Court granted an interim injunction, restraining Automat from manufacturing, selling, or exporting the infringing products.
Author: DPS Parmar
First Published by: Mondaq here