Background

The Plaintiff, Kabushiki Kaisha Toyota Jidoshokki (Toyota), Japan, filed a patent infringement lawsuit against LMW Limited (“defendant”) for alleged patent infringement related to Indian Patent IN759 titled “Fiber Bundle Concentrating Apparatus in Spinning Machine.” The plaintiff/Toyota sought to restrain the defendant from using and selling the defendant’s product Spinpact or any other product infringing the patent bearing no.IN2447593 (IN ‘759, hereinafter) titled as “FIBER BUNDLE CONCENTRATING APPARATUS IN SPINNING MACHINE” along with another Indian Patent bearing no.IN3948834 titled as “SUCTION DUCT FOR SPINNING MACHINE”.

The plaintiff did not press for any relief(s) in relation to IN883 as the defendant in its written statement, stated that it has stopped manufacture and supply of the product allegedly infringing IN883, and is now using an alternate technology. Thus, the arguments were focused on IN ‘759. The patent IN ‘759 bearing application no.629/CHE/2005 had the priority date of 28.05.2004. The patent on IN’759 was granted in favour of the plaintiff on 20.12.2010, with eight granted claims and one independent claim.

The Plaintiff, Toyota, made the following submissions in support of their case:

1. The plaintiff claimed that the defendant’s product, Spinpact, incorporated the patented technology by using knurled rollers with grooves of depth 0.15 mm, which falls within the scope of the claim granted in IN759 (groove depth of 0.04 mm or more).
2. The plaintiff pointed out that the defendant did not disclose any alternate technology in their written statement, which, under the Delhi High Court Patent Rules, implies an admission of infringement.
3. The plaintiff argued that the burden of proof to challenge the patent’s validity lies with the defendant. The defendant had neither filed pre-grant/post-grant opposition nor revocation petitions before the suit, thus failing to “clear the way” for their challenge.
4. The plaintiff contended that prior art did not disclose the specific problem of cotton fly accumulation or the claimed groove depth. They argued that combining prior arts to challenge novelty is impermissible.
5. The plaintiff emphasized the irreparable harm likely to be caused by the defendant’s continued use of the patented technology during the patent’s subsistence, warranting an interim injunction.

The Defendant, LMW Limited made the following arguments

• Non-Infringement and Prior Use

The defendant argued that they acquired the know-how of the technology involved in IN759 through a German company and developed it prior to the plaintiff’s patent. They claimed that the technology was already known and in the public domain, as grooves with depths greater than 0.04 mm were used on bottom nip rollers of spinning machines before the priority date of IN759.

• Lack of Novelty and Inventive Step

The defendant challenged the novelty and inventive step of IN759, asserting that the technology disclosed in the patent was already known through prior arts. They cited multiple prior arts that disclosed the use of grooves on rollers to solve similar problems, including grooves with depths exceeding 0.04 mm. The defendant argued that the plaintiff’s contradictory statements regarding the technical effect of the grooves cast doubt on the patent’s validity.

• Principle of “Clearing the Way”

The defendant contended that the principle of “clearing the way” only affects the balance of convenience and does not impact the credibility of their validity challenge. They emphasized that the burden is on the plaintiff to establish a prima facie case and irreparable harm. The defendant argued that the lack of “clearing the way” does not create any presumption of validity for the patent.

• Obviousness of the Claimed Invention

The defendant referred to prior art WO02/084000 A1, which taught the use of nip rollers with grooves to deal with the problem of fuzzing. They argued that the disclosure of grooves in the prior art, even without specifying the depth, meant grooves of depth greater than 0.04 mm by definition. The defendant asserted that the introduction of grooves with depth greater than or equal to 0.04 mm on bottom nip rollers lacked inventive step and would be obvious to any person skilled in the art.

• Prior Use by Plaintiff

The defendant claimed that the plaintiff’s own machines used bottom nip rollers with grooves greater than 0.04 mm in the product RX240 before the priority date of IN759. They argued that the plaintiff’s assertion that the RX240 originally had plain rollers which were later replaced with grooved ones was unsubstantiated.

• Adequate Remedy through Damages

The defendant submitted that if the measure of damages recoverable in common law would be an adequate remedy, no irreparable harm, loss, or injury would be caused to the plaintiff. They argued that the balance of convenience did not tilt in favour of the plaintiff for granting an interim injunction.

Toyota’s Arguments on prior art cited by the Defendant:

1. Prior Art E1 (WO02/084000 A1):
   1. Toyota acknowledged that E1 contains grooves on the bottom nip roller but argued that E1 does not solve the same problem as IN759. Specifically, E1 does not address the accumulation of cotton fly between the bottom nip roller and the suction part, which is the problem solved by IN759. Instead, E1 was intended to increase the holding force of the perforated belt.
   2. Toyota also pointed out that the defendant admitted in their written statement that E1 does not disclose the depth of the grooves on the bottom nip roller, which is an essential feature of IN759.
2. Prior Art E2 (US6327747B1):
   1. Toyota argued that while E2 discloses grooves on the surface in contact with the fibre to remove cotton fly, it does not specify the depth of the grooves. Additionally, E2 does not explicitly reference the surface being the bottom nip roller 2.
3. Other Prior Arts:
   1. Toyota contended that the other prior arts cited by the defendant disclose grooves of various depths in relation to drafting rollers, not bottom nip rollers. This distinction is crucial because the defendant’s own affidavit of a person skilled in the art admitted that drafting rollers may not be used as nip rollers 3.
   2. Toyota emphasized that there is no evidence to suggest that anyone used drafting rollers as nip rollers before the priority date of IN759

Court’s conclusion after the consideration of submissions from both parties:

1. The Court underscored the statutory provision under Section 53 of the Patents Act, 1970, which fixes the patent term at twenty years from the filing date, after which the patent ceases to have effect and enters the public domain. It emphasized that once a patent expires, no protection or injunction can be granted to prevent use of the patented technology.
2. Given that IN759 expired on May 24, 2025, the Court held that granting an interim injunction restraining infringement of IN759 would be futile and beyond the scope of statutory provisions. The Court noted that the plaintiff’s suit for permanent injunction and the present application for interim relief relate to an expired patent, which cannot be enforced anymore.
3. The Court referred to a recent Supreme Court decision in Novartis AG v. Natco Pharma Limited, where it was held that injunctions cease to have practical relevance post-patent expiry, reinforcing the Court’s stance.
4. Regarding the defendant’s conduct and the plaintiff’s apprehensions about Spinpact products manufactured during the patent’s life, the Court indicated that any remedy for alleged past infringement would be financial compensation, not injunctive relief.
5. The Court declined to adjudicate the merits of infringement or validity challenges concerning IN759 due to the patent’s expiry but directed the defendant to file an affidavit detailing the manufacture and sale of Spinpact products containing the patented features up to the expiry date, to assist in final adjudication.

Conclusion

As the patent term had already expired, the court did not grant any interim injunctive relief. However, the court kept open the grant of compensation to Plaintiff for Spinpact products manufactured by the defendant during the patent’s life at the stage of final determination after the trial. The court also directed the defendant to file an affidavit detailing the manufacture and sale of Spinpact products containing the patented features up to the expiry date of IN759.