Patent

Eliminating "Interim" IP Injunctions?


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…
Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen. Professional History: After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

3 comments.

  1. Avatar12th Man

    The proposition sounds interesting however, I see a problem here. It appears to me that the basic premise of the proposal is the inexperience of the courts in developing countries in dealing with complex patent law issues. This is admittedly true. It is, nonetheless, true as well that developing countries, specially the bigger and the important ones, are working with their developed counterparts to train the judges in patent law issues. It may be a matter of some years that they may become knowledgeable enough to handle the complex issues at the interim level. This may create problems in common law countries where huge reliance is placed on prior case law. Seen in this context, the proposal unsettles me.

    Ironically, such an approach may work better where judges are more knowledgeable and specialised enough to disallow concerned parties from using the conventional tactics to prolong the case in hand.

    Owais

    Reply
  2. AvatarShamnad Basheer

    Thanks for your comment:

    Perhaps, one might argue (as you seem to suggest) that given that advanced jurisdictions are better at disposing off trials in quicker times, we need to dispense with interim injunctions in such jurisdictions as well. But for this, we need to have an estimate of following: what is average time for interim phase in such jurnds? what is average time for trial? if the gap is too huge, can the time for trial be shortened? if it cannot be shortened too much (and there still continues to be a gap between trial time and interim time), can a judge legitimately assess prima facie strength within the normal time allotted for an interim?

    I’m guessing that even in the US and UK, a trial is far better and one should dispense with interims in complicated patent cases.

    Reply

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