On May 8, 2024, in the case of Guala Closures Spa ("plaintiff") and Agi Greenpac Limited ("defendant"), the single Judge of the Delhi High Court rejected the plaintiff's application for an interim injunction alleging infringement of the plaintiff's patent on the grounds that the defendant's product/closure does not fall within the scope of the claims of the plaintiff's patent. The plaintiff had failed to meet the triple test for the grant of injunction, and the balance of convenience strongly favoured the defendant.
Facts and Submissions
The plaintiff claimed to be a multinational company engaged in the manufacture of closures for spirits, wines, mineral water beverages, olive oil, etc. The plaintiff filed a suit in relation to its grant of patent No. IN'522, titled 'Tamper- Evident Closure with Tear Off Seal", granted on 19th October 2020 in India ("Patent"). The plaintiffs patented its products globally and have had a considerable presence in India since 1994, and the two-level tamper-proof closure is an exclusive innovation, as per the plaintiff. The defendant is also a manufacturer of closure seals, involved in manufacturing tamper-proof security caps and closures, and commenced business in 2017. The defendants launched a new range of closures called 'the Voila Closure,' which, according to the plaintiff, infringes the plaintiff's patent.
The plaintiff issued a cease-and-desist letter on 28th June 2021, asserting its patent and demanding that the defendant cease manufacturing and selling the infringing products. The defendant stated that their product is altogether different and involves a proprietary technology, which is the subject matter of another granted Indian patent IN 326637. Subsequently, the plaintiff filed a suit seeking interim injunction alleging infringement of their patent by the defendant.
The plaintiffs outlined the features of the patent and demonstrated their similarity to the defendant's product. They argued that despite the additional features introduced by the defendant, the infringement is evident when the patent is mapped onto the defendants' product. The plaintiff contended that, according to the settled legal position with respect to the patented product, a third party could obtain an improvement patent only with the consent of the original patentee, which the defendant had failed to obtain.
The defendant argued the differences between their closures and the plaintiffs' closures and asserted that these variations were crucial for claim construction. The defendant made substantial investments and sales in the manufacture of the closures, whereas the plaintiffs did not have a sale of a single closure manufactured as per the patent, and only one purchase order has been filed. Thus, the balance of convenience would favour the defendants, and irreparable harm would be caused to the defendants if any interim injunction is given. The differences are essential features of the claims of the patent and the defendant's patent. Since the defendants are implementing their own patent, there cannot be any infringement of the plaintiff's patent.
Analysis by the Court
After a detailed analysis of the plaintiff's and defendant's submissions, the Court observed that the main emphasis has been on the question of infringement, and no submissions have been made on the question of the patent's validity. Accordingly, the Court dealt with the issue of patent infringement.
The Court highlighted that in a patent infringement suit, "Claim construction" is generally the first and most crucial step in adjudicating such suits, especially when confronted with products like tamper-evident closures based on mechanical features. In this regard, the Court highlighted Chapter 9 - 'Construction of the Specification and Claims'-from Terrell on the Law of Patents, which emphasises the determination of the actual scope of the Claims of a complete specification, is one of the most significant issues in litigation involving patents. Once the scope of the claims is clarified, the questions regarding infringement and invalidity often find swift resolution. In addition, the Court relied upon Rule 2(c) of the High Court of Delhi Rules Governing Patent Suits, which defines a 'Claim construction brief.' As per this rule, claim construction can be understood to be the process of breaking down the construction of each of the terms contained in the claims, their meaning, and the overall scope and effect of all the claims relied upon.
Accordingly, the Court examined the closures and the complete specification submitted and observed that the second tear-off seal of the plaintiff's closure disconnects the cap from the container. But the second tear-off seal in the Defendants' closure separates the cap from the lower sleeve. This is the basic structural difference between the patented closure of the plaintiffs and the defendant's closure. The characterisation also further shows that the purpose of the second tear-off seal in the plaintiff's patent differs from that in the defendant's product.
The Cout also highlighted that tamper-evident closures are well-known in the market. There could be different methods of using tamper-proof seals. A monopoly cannot be claimed on the manufacture and sale of tamper-proof seals per se. It is only on the patented tamper-proof seal that a monopoly can be claimed. The plaintiff's Patent IN'522 and the defendants' Patent IN'637 have similar yet distinctively different features. Both products relate to closures, but they are not identical in their construction and structural features. Thus, the plaintiff's patent cannot monopolise tamper-proof closures. There were fundamental differences as the characterisation and purpose of the suit Patent were different from the defendants' closure. The plaintiff's patent was cited as the prior art in the examination report of the corresponding EPO application of the defendant's, and the same was granted after overcoming the objections in itself, demonstrating the differences in both the closures.
In this case, the features in the defendants' closure show distinct operational mechanisms when compared to the patent. While the plaintiff argued that the defendants' products infringe upon the suit Patent, a comparative assessment reveals that the defendants' products incorporate unique features that establish distinct methodologies. Since the defendants' product incorporates genuine technical advancements that differentiate it from the Patent, prima facie, the defendant's product cannot be termed merely an improvement over the plaintiff's basic patent and, therefore, is a non-infringing product.
Conclusion
The Court concluded that for infringement to be established, it is required that a plaintiff must demonstrate that the defendant's product/closure falls within the scope of the claims of the plaintiff's patent and that the defendant's product operates in the same way as the patented invention. In this case, the detailed analysis of the patent and the defendant's product reveals significant differences in both mechanism and purpose. The sequential separation process and distinct functionality of the second tear-off seal in the defendant's closure are different from the detachment and tamper-evident function of the plaintiff's patented closure. Since the main characterisation lies in the second tear-off seal, the function, purpose, and mechanism of the suit Patent are entirely different; hence, prima facie, the defendants' product does not infringe the plaintiff's patent.
In order to reach this conclusion, the Court relied on the case of American Cyanamid Company v. Ethicon Ltd., (1975) 1 All. E.R. 504, wherein it was held that "prima facie, there is no case of infringement made out, as the defendants' product operates differently and does not incorporate all essential elements of the plaintiff's patent claims. Moreover, the balance of convenience heavily favours the defendants on account of their substantial sales and market presence. They have been producing their closure products and have filed their sales figures, indicating an established business that would be jeopardised by a finding of infringement".
Thus, considering the significant operational disparities between the plaintiff's patent and the defendants' product/ closure, any injunction or legal action for infringement would unduly harm the defendants' business interests. Additionally, no irreparable harm is demonstrated to the plaintiff, as the defendants' closure does not directly compete with the plaintiff's patented closure.
In light of the foregoing analysis, the Court concluded that the triple test for grant of injunction is not met, and the balance of convenience strongly favours the defendant. Accordingly, the Court dismissed the request for an interim injunction and held that prima facie, there is insufficient evidence to establish a case of infringement.
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