In an earlier post
, I bemoaned the mechanical grant of ex parte injunctions in patent matters and went on to note that:
“In fact, I would go to the extent of arguing (as I do in this paper here
with Prakruthi Gowda) that it is far better to dispense with the interim injunction phase altogether in complicated patent disputes and move directly to the trial stage, where issues of validity and infringement are assessed once and for all, after looking into expert evidence etc. This approach finds support in a Supreme Court ruling by Justice Katju last year and more recently by Justice Bhat
Given the relative inexperience of the Indian courts with patent infringement suits (where even the most astute of them may find it difficult to appreciate complicated issues pertaining to the scope of patent claims and validity), it is often very difficult to make any meaningful assessment of the prima facie strength or weakness of the case brought by the plaintiff.
Therefore, where patent infringement law suits throw up credible and complicated issues of infringement and validity, courts ought not to grant temporary injunctions! Rather, they should directly move to the trial stage and assess the merits or otherwise of granting a permanent injunction. However, they ought to dispose of such trials quickly by inter alia, discouraging adjournments, insisting on lesser hearings and more pleadings (and documents) and appointing good neutral technical experts who can assess the technology and the claim scope in a more objective manner than either of the parties! And perhaps, it may be a good idea for us to evolve a more formalised structure for specialised IP benches at the various High Courts.
For those interested, we note in the paper as below:
“In a suit seeking alleging patent infringement, the court ought not to grant any interim injunction in cases where the defendant presents a “credible” challenge to either the validity of the patent or to the factum of infringement. Rather, the matter ought to go to the trial for a final decision on the merits. This suggestion stems from the fact that in most IP cases, the interim stage decision seals the fate of the dispute. Any wrong decision at this stage has colossal consequences, making it imperative that courts try and get the right result at the interim stage.
However, in a complicated patent dispute, it is virtually impossible to make the right assessment within the short window normally available during an interim phase. Particularly so when Indian courts are relatively inexperienced with patent disputes, increasing the likelihood of wrong decisions at the interim stage; a fact borne out by the Roche vs Cipla case discussed later in this paper.
We therefore recommend that Indian courts short-circuit the interim phase and move directly to the trial stage.
A logical corollary of the above proposition is that if the defendant presents an inherently untenable defence by either mounting a frivolous challenge to the validity or claiming non-infringement without giving adequate reasons, the court ought to hold in favour of the plaintiff i.e. that a “prima facie case” has been established. This situation will however be the rare exception than the norm.
Even in rare cases where a court is able to arrive at a quick prima facie view of the merits in favour of the plaintiff, there is no automatic grant of an injunction. Rather, courts must insist that other factors weigh in favour of the plaintiff too i.e. irreparable injury, balance of convenience and public interest (although this has not yet been articulated as a separate factor, we argue that it ought to).”
As I’d mentioned earlier, the Supreme Court of India (via Justice Katju) appears to have endorsed such an approach. And more lately, as Prashant blogged about in this piece here, India’s most influential IP judge, Bhat J, appears to followed suit too. This is a significant judicial innovation adopted by Indian courts, which other developing countries could perhaps borrow from in appropriate circumstances.
In our paper, although we broadly agree with Justice Katju’s approach in TVS vs Bajaj (where he follows the ruling in See Shree Vardhman Rice & Gen Mills v. Amar Singh Chawalwala), we take issue with the rather broad manner in which he words his order, almost suggesting that there can be no interim injunction in any IP matter! If recent cases are anything to go by, it would appear that this logic is being applied in regular trademark cases as well.
Our argument is that this elimination of the interim phase should only be in those matters, where it can be convincingly shown that it is next to impossible to make a decent prima facie assessment of the matter. And not in regular and straightforward copyright or trademark matters, where a prima facie evaluation could be done with relative ease. Else there is the risk of a serious TRIPS violation issue, since TRIPS mandates that interim injunctions be granted in appropriate cases.
To conclude, we must not forget that courts are manned by “men” (a term meant to include “women” as well) and not “supermen”. Therefore, it would seem perfectly okay for our courts to simply throw up their hands in appropriate cases and claim their inability at assessing complex evidence and arriving at a “prima facie” conclusion. But only in “appropriate” cases…