Enforcement through the courts

Strategy

What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

In recent years, the Indian courts have shown zeal and dynamism for the effective protection of IP rights, particularly in respect of patents. The most effective way to enforce patent rights includes a civil action seeking the following remedies:

  • a temporary injunction – the court can impose a temporary restraining order on the defendant until final disposal of the civil suit or for such time as stated in the court order;
  • a permanent injunction – the court can issue a final order restraining the defendant from carrying out activities constituting patent infringement in India;
  • damages or account of profits;
  • delivery up or destruction of infringing articles; or
  • legal costs.

A patent owner also has the following options to enforce its rights in India:

  • an Anton Piller order – the court can appoint a local commissioner on the request of the plaintiff or otherwise to hold or seal infringing materials or accounts in the defendant’s premises;
  • a Mareva injunction – the court can restrain the defendant from disposing of its assets within India until the trial ends or judgment in the patent infringement action is passed; or
  • a John Doe order – the court can order search and seizure in respect of an unknown defendant with the cooperation of the local commissioner and police, if required, to raid any premises where infringing activities are suspected to be carried out.

What scope is there for forum selection?

In India, a patent infringement suit may be filed either in a district court with jurisdiction or before a high court, depending on the pecuniary value of the civil suit (based on the damages sought, the applicable court fees and costs).

However, if a defendant counterclaims for revocation of the patent, the suit and the counterclaim are transferred to a high court. As defendants invariably counterclaim for revocation, patent infringement suits are typically heard mostly by the high courts.

Pre-trial

What are the stages in the litigation process leading up to a full trial?

The following stages lead to a full patent trial:

Pleadings A suit is instituted before the court in the appropriate jurisdiction by the plaintiff, including a plaint (containing the facts, grounds, claims, arguments and relief claimed) and supporting documentary evidence. The plaint must comply with Orders IV (institution of suits), VI (pleadings) and VII (plaint) of the Code of Civil Procedure.

  • In addition to the plaint, the plaintiff often files separate interim applications seeking:
  • a temporary injunction in conjunction with an ex parte ad interim injunction;
  • the appointment of a local commissioner; or
  • the appointment of a scientific adviser.

The court will consider the interim applications and issue any necessary orders. In exceptional cases an ex parte ad interim injunction order can be passed on the first day of the hearing where the plaintiff can prove, based on the documents available on record:

  • a prima facie case;
  • irreparable loss and injury; and
  • the balance of convenience in its favour.

Pursuant to institution of the suit, if a court prima facie finds merit in plaintiff’s claims, it can issue a court notice to the defendant to appear before the court on a given date. The plaint is then also served on the defendant. On receiving the notice, the defendant can appear before the court to seek time to file a written reply. The plaintiff may then reply to the defendant in writing.

Admission and denial of documents At this stage the parties must produce before the court all of the documents in their possession on which they intend to rely. Thereafter, the parties must notify the court as to whether they admit or deny the documents filed by the other side. The court marks the exhibits accordingly.

Framing of issues Based on the pleadings filed by both the parties, the documents and the preliminary hearing, the court frames the main issues to be dealt with.

Discovery (optional) Discovery is the process by which a party may obtain information or documents from the opposing party before trial, through a request from the court. At this stage, depositions, requests for admission and requests for the production of documents, objects and entry may be filed.

Evidence At the evidence stage, the parties must provide evidence and confirm the veracity and genuineness of the evidence filed by an affidavit under oath. In order to prevail in a civil trial, the plaintiff may introduce competent evidence with respect to each disputed allegation, if already not filed.

Examination and cross-examination of witnesses The parties’ witnesses give statements under oath which may be questioned by the other party’s counsel. At this stage, an expert witness may be asked to appear before the court to validate the parties’ arguments or his or her own report.

Final arguments At this stage, each party’s counsel presents its case, with supporting arguments, evidence and precedents. Written arguments or submissions may also be given to the court at its discretion.

Judgment The court then pronounces its judgment.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

Ordinarily, the IP courts are reluctant to grant adjournments due to the time-sensitive nature of such matters. Therefore, in order to obtain an adjournment the defendant must prove beyond reasonable doubt the reason for adjournment. As a matter of practice, the courts grant adjournments subject to the payment of costs unless the reasons or circumstances are such that an adjournment is necessary in the interest of justice.

The plaintiff may prevent the other side from seeking frequent, unnecessary adjournments by raising formal objections before the court and pressing for the refusal of adjournment requests. Further, the plaintiff may press for costs so that any loss caused due to delay may be compensated. The best way to proceed is to request the court to fix a timeline for adjudication of the matter – this may be allowed depending on the court’s discretion and the urgency of the case. 

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

In anticipation of a potential patent infringement suit, the validity of a patent can be challenged by filing a revocation petition before the Intellectual Property Appellate Board.

At trial

What level of expertise can a patent owner expect from the courts?

The judges handling IP cases are “highly proficient” and “fully conversant” with the relevant IP laws applicable in the country. Only judges with experience or expertise in the field handle IP cases, and hence a reasonable level of expertise may be expected from the courts.

Are cases decided by one judge, a panel of judges or a jury?

The first-instance civil action is decided by a single judge in India. However, the appellate courts are often the division bench or a bench comprising of two or more judges. 

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Not applicable. 

What role can and do expert witnesses play in proceedings?

Expert witnesses or scientific advisers (according to the Patents Act) are extremely important as far as their evidentiary value is concerned. They assist the court with the technical aspects of inventions in order to decide complex patent litigation fairly and properly. The Indian legislature is cognisant of the fact that patent law may deal with extremely intricate inventions in scientific, technological, pharmaceutical and other fields with which the courts may be unfamiliar. For this reason, Section 115 of the Patents Act provides for the appointment of a scientific adviser to provide expert assistance. In addition, Rule 103 of the Patent Rules provides the requisite qualifications for a person to qualify as a scientific adviser:

  • a degree in science, engineering or technology;
  • at least 15 years’ practical or research experience; and
  • a responsible post in a scientific or technical department of the central or state government or in any organisation.

In addition, the Indian judiciary also accepts and recognises that a person can be an expert in an area of specialised knowledge by experience and he or she need not hold a degree in that field. A person can also become an expert by virtue of their occupation.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

The Indian courts do not strictly follow the literal construction of claims and values the doctrine of equivalents based on the interpretation that claims must be “fairly based” on the matter disclosed in the specification (in line with Article 69 of the European Patent Convention). However, as yet no decision has provided clear guidelines on the interpretation of the phrase 'fairly based'. The first Indian case on the doctrine of equivalents, Ravi Kamal Bali v Kala Tech, was decided in 2008.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

The Indian courts can grant preliminary injunctions provided that the plaintiff can establish a strong prima facie case. In India, courts of appropriate jurisdiction can also grant ex parte injunctions to the plaintiff. The quintessential ingredients for an order of temporary injunction that must be proven by the plaintiff are as follows:

  • strong prima facie case;
  • irreparable loss and injury; and
  • the balance of convenience.

Therefore, to obtain a preliminary injunction, the plaintiff must prove these elements beyond reasonable doubt.

How are issues around infringement and validity treated in your jurisdiction?

In India, caution and stringency are observed in patent infringement and validity cases. The Indian patent judicial regime seeks to reduce the menace of IP infringement by adopting a strict approach while determining questions of infringement and has also adopted measures that enunciate its stringent and effective deterrence policy. Due consideration is given to:

  • the protection and promotion of innovation;
  • creativity;
  • balancing parties’ interests parties; and
  • public interest.

Deterrent measures taken under the Indian legal regime include not confining the scope of protection conferred on a claim to the literal language of the claim. 

Will courts consider decisions in cases involving similar issues from other jurisdictions?

Yes, provided that the cited facts apply to the facts brought before the court. While foreign decisions may not be binding on the Indian courts, they have strong persuasive value and due consideration is given to them by the Indian courts. 

Damages and remedies

Can the successful party obtain costs from the losing party?

Yes, in the form of damages or an account of profits. These are solely at the discretion of the court, which will take into consideration the loss and injury suffered by the successful party through the actions of the losing party.

What are the typical remedies granted to a successful plaintiff?

By way of relief, a patent owner may seek:

  • an injunction (subject to such terms as the courts think fit);
  • damages or an account of profit;
  • delivery up or destruction of infringing articles; or
  • legal costs. 

How are damages awards calculated? Are punitive damages available?

Three types of damage are granted under the Indian patent law regime:

  • direct;
  • indirect; or
  • punitive or exemplary.

Damages are recoverable from the date of publication of a patent application under Section 11A of the Patents Act 1970. The actual profit or loss made is of no consequence when calculating damages – thus, damages can exceed the actual profits made by an infringer, unlike in the case of account of profits.

Direct damages Direct damages are awarded to put the patentee in the position that it would have been in had the infringement not taken place. Ideally, they are the pecuniary equivalent of the injury caused. Damages calculations are generally based on the normal rate of profit or established and reasonable royalty rates. The court may award interest on damages at its discretion.

Indirect damages In general, indirect damages are not recoverable. However, in special cases, a patent owner may obtain damages based on the value of an “entire infringing device”, even if that device contains multiple features and only one feature is found to be infringing.

Punitive damages

Yes, punitive damages are granted as exemplary damages, which are awarded in addition to actual damages. They are intended to act as a deterrent and are considered as a way of punishing the defendant and based on the theory that the interests of society and the individual harmed can be met by imposing additional damages on the defendant.

Three factors guide the decision of whether to award punitive or exemplary damages:

  • whether the infringement was wilful or deliberate;
  • whether the infringer had a good-faith belief that the patent was invalid; and
  • the party’s conduct during the litigation.

Royalty rates are calculated based on the following factors:

  • the strength of patent portfolio;
  • the ratio of the patent ownership;
  • the total royalty rate payable on a particular product; and
  • the share of the patent owner. 

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

The Indian courts do not hesitate to grant injunctions to successful plaintiffs, provided that strong case of infringement is established by the plaintiff with cogent evidence.

In India, a permanent injunction can be granted after a full trial. The Indian courts usually consider the US decision of eBay Inc v Merc Exchange LLC (547 US 388 (2006)), which set out a four-factor test for injunctive relief:

  • The patentee has suffered an irreparable injury.
  • Remedies available through the law (eg, monetary damages) are inadequate to compensate for that injury.
  • Considering the balance of hardships between the plaintiff and defendant, an injunction is warranted.
  • The public interest is not damaged by a permanent injunction.

The eBay decision was considered by the Delhi High Court in F Hoffmann-La Roche Ltd v Cipla Limited (148 (2008) DLT 598). There have also been several recent cases in which the Indian courts have passed injunction orders based on the merits.

Timescale and costs

How long does it take to obtain a decision at first instance and is it possible to expedite this process?

A fully contested suit may take three to five years to reach a conclusion before the appropriate court.

An order for an interim injunction may take around six to eight months. However, in exceptional circumstances and on proof of a strong prima facie case, the Indian courts – particularly the Delhi High Court – do not hesitate to grant ex parte ad interim orders at the first hearing.

How much should a litigant plan to pay to take a case through to a first-instance decision?

The costs in a patent infringement suit depends on the length and complexities of the case. Further, the official costs depend on the damages sought and the court fee applicable to each type of relief claimed in the suit, which varies from court to court.

On average, an interim decision costs up to $25,000 and a complete trial up to $60,000. However, this may vary depending on the court, the damages sought and the length and complexities of the case. Highly complex cases could cost between $100,000 and $150,000 for an interim decision and $200,000 and $350,000 for a full decision.

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