By Jigyasa Pareek

The Delhi High Court’s decision in Pawan Kumar Goel vs Dr. Dhan Singh & Anr. [CS(COMM) 672/2022] centred on the consequences of an unsustainable cause of action and an attempt to strategically withdraw a suit while preserving future litigation rights.

The suit concerned alleged infringement of patent number 369150 relating to a process for extracting Alpha Yohimbine with purity greater than 90% from Rauwolfia canescens/tetraphylla. The Plaintiff initially claimed that the Defendants were infringing the patented process and sought permanent injunction and damages.

However, during the course of proceedings, the Plaintiff sought to withdraw the suit on the basis that documents filed by the Defendants indicated that Alpha Yohimbine was being manufactured using Rauwolfia vomitoria and not Rauwolfia canescens/tetraphylla, which according to the Plaintiff did not infringe the suit patent. On this basis, the Plaintiff requested withdrawal of the suit with liberty to file a fresh suit under Order XXIII Rule 1(3)(b) CPC, in case infringement arose in the future.

The Plaintiff argued that since the alleged cause of action had effectively disappeared, continuation of the suit was unnecessary. At the same time, it sought to preserve the right to institute fresh proceedings if the Defendants later used Rauwolfia canescens/tetraphylla, which the Plaintiff contended would amount to infringement. The Plaintiff also relied on the principle that it was the dominus litis and therefore entitled to withdraw the suit on terms it considered appropriate.

The Defendants strongly opposed the request for conditional withdrawal. While they had no objection to withdrawal simpliciter, they argued that the Plaintiff should not be permitted to withdraw with liberty to re-litigate. According to the Defendants:

• The suit itself lacked a valid cause of action.
• The patent was a process patent, not a patent over raw materials.
• The Plaintiff’s own expert had concluded that the Defendants’ process was different from the patented process.
• The Plaintiff had continued litigation despite being aware of these findings.

The Defendants therefore contended that the suit deserved dismissal for lack of cause of action rather than withdrawal with liberty, and that exemplary costs should be imposed for false and frivolous litigation.

The Court found the Plaintiff’s justification for conditional withdrawal to be untenable. It observed that the patent related to a process for extraction, and not to any particular plant species as raw material. Consequently, the Plaintiff’s argument that use of Rauwolfia vomitoria would not give rise to infringement while use of Rauwolfia tetraphylla would do so was found to be conceptually flawed.

The Court further noted that the Defendants had produced documents showing use of Rauwolfia tetraphylla, undermining the very basis on which withdrawal was sought. The Plaintiff could not be permitted to take inconsistent positions or approbate and reprobate depending on litigation convenience.

Significantly, the Court also took note of the Plaintiff’s own expert report, which indicated that the Defendants’ process was dissimilar from the patented process. This weakened the Plaintiff’s claim and supported the Defendants’ contention that the litigation had been unnecessarily pursued.

In these circumstances, the Court refused permission to withdraw the suit under Order XXIII Rule 1(3)(b) CPC. The Court held that what could not be justified directly could not be achieved indirectly through an affidavit-based withdrawal.

Recognising that the Defendants had been drawn into avoidable litigation, the Court imposed costs of Rs. 50,000 on the Plaintiff.