An International Guide to
Patent Case Management for Judges

6.8 Other actions

6.8.1 Cases involving groundless threats of illegal proceedings

6.8.1.1 What constitutes a “threat”?

Keeping in mind the serious negative effects and consequences associated with infringement proceedings, the stated policy of the law is that no person should unnecessarily be subjected to baseless threats of infringement. Under the Patents Act, 1970, groundless threats of infringement are considered civil wrongs.

A “groundless threat” under the Act is an unjustified or wrongful threat by which any person, whether having an interest in the patent or not,²²⁷ threatens another with legal proceedings without a reasonable basis. It is important to note that the mere notification of the existence of a patent does not constitute a threat of proceedings within the meaning of the relevant section. In LG Electronics India Pvt. Ltd v. Bharat Bhogilal Patel,²²⁸ the Delhi High Court clarified that

if any proprietor or the right holder issues a notice to the custom officials and the custom officials act upon the same by restricting the imports of consignments of any party without the determination (prima facie or otherwise) of the factum of infringement of patent by the appropriate designated authority, then such notice by the right holder to the customs and the actions thereof by the customs either in the form of notice to that party or otherwise calling upon the party to explain its stand are all unnecessary illegal threats to that party.

In Bata India Ltd v. Vitaflex Mauch GmbH,²²⁹ even a legal notice was considered a “threat,” and, on facts, it was concluded that threats made by the defendant to the plaintiff were groundless, unjustifiable and wrongful.

6.8.1.2 Remedies

The court typically considers the grant of the following reliefs:

1. (a) a declaration to the effect that the threats are unjustifiable;
2. (b) an injunction against the continuance of the threats; and
3. (c) such damages, if any, as he has sustained thereby.²³⁰

The court is also empowered to pass interim orders, as in any other civil suit. For instance, in LG Electronics,²³¹ a suit was initiated on the basis that the filing of a border enforcement action with customs without a finding of infringement from the court amounted to a groundless threat. In the facts of the case, the Delhi High Court passed an interim order staying the operation of a border enforcement action to stop the import of allegedly infringing goods, pending a final decision from a civil court on the issue of infringement.

6.8.2 Declaration of non-infringement

Declaration of non-infringement refers to an application to the court for a declaration that any new process or article does not infringe an existing patent.²³²Under Section 105 of the Patents Act, 1970, in order to object to declaratory relief, the following conditions precedent need to be fulfilled:

• The plaintiff has applied in writing to the defendant for a written acknowledgment to the effect of the declaration claimed.
• The plaintiff has furnished to the defendant the full particulars in writing of its products or process in question.

The defendant has refused or neglected to give such an acknowledgment. Normally, in civil suits, the plaintiff who has sought the relief of non-infringement bears the burden of proof. This was confirmed by the Madras High Court in Bajaj Auto Ltd v. TVS Motor Co. Ltd,²³³ which went on to hold that, even though the defendant-patentee in the non-infringement filed a counterclaim of infringement, the burden of proof on the person seeking the declaration of non-infringement cannot be reduced or changed.

If the plaintiff in such a declaratory suit is successful, the court can issue a declaratory judgment that the specific product or process of the plaintiff does not infringe the identified patent. At the same time, Section 105(3) of the Patents Act, 1970, stipulates that the court cannot examine the patent’s validity in such proceedings.