By Jigyasa Pareek

In litigation, there is often a marked difference between what is pleaded and what is actually argued. A written statement in a patent infringement suit may teem with objections under Sections 64 and 107 of the Patents Act, 1970, but it is the arguments actually advanced, and more importantly, crystallised in written submissions, that define the contours of adjudication and further appeal. An issue cannot be said to be pressed merely because it finds place in the pleadings; it must be supported by a structured comparison, claim mapping, and cogent reasoning.

This discipline is equally vital in prosecution. A bare reference to a prior art, for instance, does not suffice to sustain an objection of lack of novelty or inventive step. The objection must be demonstrated through a clear mapping of claim elements, or a reasoned explanation of how the prior disclosure anticipates or renders the claim obvious.

The Delhi High Court’s Division Bench decision in Neway Industries Pvt. Ltd. vs Mold-Tek Packaging Ltd. [FAO (COMM) 235/2025, FAO (COMM) 241/2025] illustrates this principle with striking clarity.

The dispute concerned two patents owned by Mold-Tek: IN’417 entitled “Tamper-Evident Leak Proof Pail Closure System” and IN’724 entitled “Tamper Proof Lid Having Spout”. A patent infringement suit was instituted by Mold-Tek [CS (Comm) 01/2024] against Neway before the District Judge (Commercial), Patiala House Courts, New Delhi. The suit was accompanied by an application seeking interim injunctive relief, pursuant to which an ad interim injunction came to be granted in Mold-Tek’s favour. In response, Neway moved an application seeking vacation of the ad interim injunction and filed a written statement disputing infringement and challenging the validity of the suit patents under Section 107 read with Section 64 of the Patents Act.

By its impugned order, the Commercial Court confirmed the injunction in respect of IN’417, holding that a prima facie case of infringement had been made out and that the invalidity challenge lacked substance. However, in relation to IN’724, the Court vacated the ad interim injunction order. Aggrieved, Neway appealed against the grant of the interim injunction for IN’417, while Mold-Tek challenged the refusal of the interim injunction for IN’724 before the Division Bench of the Delhi High Court.

Infringement and validity of IN’417

On the aspect of validity of IN’417, the Commercial Court had observed that Neway failed to undertake any comparative analysis between the claims of the suit patent and the cited prior art, IN’127.

Before the Division Bench, Mold-Tek emphasised that although the written statement referred to several prior art documents and alleged lack of novelty and inventive step under Section 64(1)(e) and (f), the written submissions filed before the Commercial Court substantially narrowed the challenge to IN’127 alone. Even qua IN’127, there was no comparative analysis to indicate that the claims in IN’417 were anticipated.

The Division Bench concurred and drew a clear distinction between pleading a ground and actually pressing it. It noted that while multiple objections may be taken in the pleadings, what ultimately matters is what is actually urged and asserted in written submissions and oral arguments. Written submissions, the Court observed, serve the purpose of identifying the issues that are actually pressed. “Once the submissions are reduced to writing, it is ordinarily not open to the party to, in appeal, ventilate issues which are not captured in the written submissions”. The appellate Court would examine the correctness of the order only with respect to the issues that were substantively urged before the Court below.

Accordingly, the Division Bench found no infirmity in the Commercial Court’s conclusion that the validity challenge to IN’417 lacked substance.

On infringement of IN’417, the Division Bench upheld the Commercial Court’s findings. It noted that the Commercial Court had undertaken a detailed comparison between the claims of IN’417 and Neway’s product.

In view of the above, the Division Bench affirmed the continuation of the injunction in respect of IN’417.

Infringement and validity of IN’ 724

While affirming the Commercial Court’s finding of infringement in favour of Mold-Tek (the same was not cross-challenged by Neway in the appeal), it found fault with the Commercial Court’s treatment of invalidity.

The Division Bench noted that while the Commercial Court referred broadly to “prior art” and “similar products in the market”, it did not clearly identify or analyse the specific prior art forming the basis of its conclusions on lack of novelty and inventive step. The only prior art discussed was Mold-Tek’s earlier patent, IN’276. Even qua IN’276, the Commercial Court failed to properly compare the claims, overlooking the distinction that IN’276 related to a spout per se, whereas IN’724 claimed a lid incorporating a spout. The issue of invalidity was therefore remanded for fresh consideration.

The Bench also pointed out a conceptual error in the impugned order. The Commercial Court had observed that there was “no infringement” as the suit patent was generic and lacked novelty. The Division Bench clarified that this reasoning conflated infringement with invalidity. Whether a patent is vulnerable to revocation cannot, by itself, negate infringement.

Further, the Division Bench held that the Commercial Court had reversed the burden of proof in establishing a plea of invalidity. While the plaintiff bears the onus of establishing infringement, once a prima facie case is made out, the burden shifts to the defendant to substantiate a credible challenge to validity; that burden cannot be placed on the patentee.

In view of these findings, the Division Bench set aside the order vacating the injunction qua IN’724 and revived the ex parte injunction, restoring the status quo ante. The matter was remanded to the Commercial Court for a fresh determination on the limited question of validity of IN’724.