By Jigyasa Pareek

The Delhi High Court in Innovation Glass India Pvt. Ltd. & Anr. vs Blick System India Pvt. Ltd. [CS(COMM) 456/2023] considered the territorial jurisdiction of the Court to entertain a patent infringement suit where the Defendant was based outside Delhi and the alleged infringing project was also situated outside Delhi. The Court also considered whether the Defendant’s prior institution of a revocation petition under Section 64 of the Patents Act, 1970, before the Delhi High Court had a bearing on the jurisdiction of the infringement suit. The decision also addressed whether the plaint could be rejected or returned for want of jurisdiction and whether the Plaintiffs could amend the plaint to place additional facts concerning the alleged cause of action on record.

The suit was instituted in respect of patent number IN284904, entitled “Sectional Construction Assemblies”. The Plaintiffs alleged infringement by the Defendant in connection with certain glass facade projects. Following cease-and-desist notices issued between August 2020 and February 2023, the Defendant instituted a petition under Section 64 of the Patents Act seeking revocation of the patent before the Delhi High Court in April 2023. The infringement suit was subsequently instituted in July 2023.

Notably, the Defendant operated out of Thane, Maharashtra, while one of the projects relied upon in the plaint by the Plaintiffs, namely the Ayodhya Airport project, was to be executed in Uttar Pradesh. The project was commissioned by the Airports Authority of India (AAI), which had its office in Delhi. The contractual chain was such that AAI awarded the project to M/s S.K. Integrated Consultants, which had its office in Delhi, which subcontracted it to Shankar Fenestration & Glasses India Pvt. Ltd., which had its office in Delhi, which in turn subcontracted the project to the Defendant.

The plaint contained factual averments concerning the projects, including the Ayodhya Airport project and the Defendant’s alleged involvement therein. The Plaintiffs thereafter filed an application under Order VI Rule 17 CPC seeking amendment of the plaint. The proposed amendments sought to place on record, inter alia, facts concerning the location of AAI in Delhi, the issuance of tenders from Delhi, the contractual chain involving Delhi-based entities, and the Defendant’s alleged participation in the bidding process for another proposed project, namely the Khyber project, in Delhi.

The Defendant filed an application under Order VII Rules 10 and 11 CPC, seeking return or rejection of the plaint on the ground that the Delhi High Court lacked territorial jurisdiction. It was argued that the Defendant’s revocation petition could not itself confer jurisdiction upon the Court in the subsequently instituted infringement suit. The Defendant further argued that the requirements of Section 20 CPC were not satisfied since neither the Defendant nor the alleged infringing projects were situated within Delhi. It was also contended that the proposed amendments were an attempt to introduce fresh averments for the purpose of creating territorial jurisdiction, including by relying upon the location of AAI, the chain of contractual arrangements and an alleged bid for Khyber Project in Delhi. It was also contended that bidding for a project does not amount to infringement of the suit patent.

The Plaintiffs opposed the application, relying, inter alia, on the fact that the Defendant had already instituted the revocation proceedings before the Delhi High Court and on the statutory scheme under Sections 64 and 104 of the Patents Act. The Plaintiffs also relied upon the Ayodhya Airport tender and the involvement of entities having offices in Delhi to establish a part of the cause of action within Delhi.

The Court first considered the Defendant’s application under Order VII Rules 10 and 11 CPC. It reiterated that the Court must examine the averments contained in the plaint, read as a whole, to determine whether a cause of action is disclosed within its territorial jurisdiction.

On the pleadings concerning the Ayodhya Airport project, the Court noted that referencing the same in the plaint was sufficient as the tender was issued by AAI which had its office in Delhi, and that the tender had been awarded to M/s S.K. Integrated Consultants, which also had its registered office in Delhi. Although the physical execution of the project was outside Delhi, the Court held that these pleaded circumstances were sufficient to establish a part of the cause of action within Delhi under Section 20(c) CPC.

The Court then considered the effect of the Defendant’s revocation petition. Relying on the proviso to Section 104 and the principles laid down in Aloys Wobben, the Court held that since the Defendant had already instituted revocation proceedings before the Delhi High Court prior to the infringement suit, it could not subsequently raise revocation as a counterclaim in the infringement proceedings. Reading Sections 64 and 104 conjointly, the Court held that the same Court seized of the revocation proceedings should also adjudicate the infringement suit.

The Court further held that the quia timet principle could be invoked in the circumstances pleaded by the Plaintiffs. The plaint contained foundational averments indicating an imminent and credible threat of infringement within the jurisdiction, bringing the case within the principles recognised in Allied Blenders and Shilpa Medicare.

The Court then considered the Plaintiffs’ application under Order VI Rule 17 CPC. It found that the proposed amendments concerning the location of AAI, the Delhi-based contractual chain and the Khyber project had a foundation in the existing plaint. The amendments were therefore clarificatory in nature, necessary for determining the controversy, and did not introduce a new cause of action or alter the nature of the suit. Finding no prejudice to the Defendant, the Court allowed the Plaintiffs’ application.

Accordingly, the Court held that the plaint disclosed a sufficient cause of action within Delhi and the amended plaint was taken on record.