Summary
Mold-Tek Packaging Limited ("Mold-Tek") holds two Indian patents for tamper-evident, leak-proof pail closure systems and alleged that Neway Industries Pvt. Ltd. ("Neway") was manufacturing and selling infringing products without its consent. The Commercial Court granted an interim injunction for one patent but refused it for the other, on a finding that the second patent lacked novelty and inventive step. Both parties appealed. The Delhi High Court upheld the injunction on the first patent, finding that Neway's failure to produce a comparative claim analysis fatally undermined its invalidity defence, and confirmed that a design registration offers no protection against patent infringement liability. On the second patent, the court upheld the infringement finding but remanded the invalidity question, criticising the lower court for conflating infringement with invalidity and for reversing the burden of proof. The ruling is a timely reminder that design and patent protection occupy distinct legal territories, and that a credible invalidity challenge requires more than bare pleading.
Background
Packaging disputes rarely raise questions of legal principle. This one did, twice over. At stake were two registered Indian patents held by Mold-Tek Packaging Limited (“Mold-Tek”), a dispute with a rival manufacturer over tamper-evident closures, and a lower court order that, in resolving the invalidity question for one patent, confused infringement with invalidity altogether.
Mold-Tek holds Indian Patent IN 401417 (“IN’417”), covering a “Tamper-Evident Leak Proof Pail Closure System”, and Indian Patent IN 298724 (“IN’724”), covering a “Tamper Proof Lid Having Spout for Containers and Process for Its Manufacture.” Both patents protect closures designed to prevent tampering and leakage in industrial pail containers. Mold-Tek alleged that Neway Industries Pvt. Ltd. (“Neway”) was manufacturing and selling products that infringed both suit patents within the meaning of Section 48 of the Patents Act, 1970, which confers on a patentee the exclusive right to prevent third parties from making, using, offering for sale, or importing the patented product in India without consent.
Mold-Tek instituted a commercial suit (CS (Comm) 01/2024) before the District Judge (Commercial Court)-01, Patiala House (“the Commercial Court”), seeking a permanent injunction. The suit was accompanied by an application for an ad interim injunction pending disposal of the suit. On 8 January 2024, the Commercial Court granted the ad interim injunction in favour of Mold-Tek. Neway then moved an application under Order XXXIX Rule 4 of the CPC to vacate that order.
By its order dated 20 August 2025, the Commercial Court confirmed the ad interim injunction in respect of IN’417 but vacated it in respect of IN’724, finding the second patent vulnerable to invalidity. Both parties appealed to the Delhi High Court. Neway challenged the injunction on IN’417, and Mold-Tek challenged the refusal to grant relief on IN’724.
Issues
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- Whether Neway made out a credible challenge to the validity of IN’417 under Section 107 read with Section 64 of the Patents Act, sufficient to displace the prima facie case of infringement
- Whether the core functional elements of IN’417 were reproduced in Neway’s product, and whether Neway’s design registration afforded any defence to patent infringement
- Whether the Commercial Court correctly applied the prior art analysis in finding IN’724 vulnerable to invalidity, particularly in its comparison of IN’724 with Mold-Tek’s own lapsed patent IN 207276 (“IN’276”)
- Whether the Commercial Court erred in conflating the distinct findings of infringement and invalidity in respect of IN’724, and in reversing the burden of proof on the invalidity defence
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Neway’s Arguments
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- IN’417 lacked novelty and inventive step in light of prior art, including a prior Indian patent application (IN 288127, “IN’127”) and two US patents (US 5,307,948 and US 8,251,242 B2), each of which disclosed tamper-evident closure systems with comparable functional features
- The essential features the Commercial Court identified as constituting infringement of IN’417 were themselves part of the prior art in IN’127 and therefore could not support a finding of infringement
- The ex parte ad interim injunction granted on 8 January 2024 had merged into the Commercial Court’s final order of 20 August 2025 and could not revive upon that order being set aside
Mold-Tek’s Arguments
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- Neway, before the Commercial Court, pressed the invalidity challenge to IN’417 only with reference to IN’127, and provided no comparative analysis mapping the claims in IN’127 against the claims in IN’417, making the challenge non-credible within the meaning of Section 107 read with Section 64
- The Commercial Court’s infringement finding on IN’724 was correct and unchallenged by Neway, and should be affirmed
- The Commercial Court’s invalidity analysis on IN’724 was legally flawed: it compared IN’724 with IN’276, Mold-Tek’s own prior lapsed patent for a pull-up spout, without recognising that IN’724 is a patent for a lid incorporating a spout and not merely for a spout alone, a categorically different claim scope
- The Commercial Court erroneously held in paragraph 34 of its order that there was no infringement because the patent lacked novelty, conflating two independent legal findings
- The onus to establish a credible invalidity challenge under Section 107 read with Section 64 rests on the defendant; the Commercial Court improperly reversed that burden
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Court’s Observations and Analysis
The Invalidity Challenge to IN’417: Pleading Is Not Enough
The first appeal turned entirely on whether Neway had made out a credible challenge to the validity of IN’417. Under Section 107 of the Patents Act, every ground available for revocation under Section 64 is open as a defence in an infringement suit, but the defendant must actually make that challenge out.
Neway’s written statement had alleged invalidity of IN’417 on multiple prior art grounds. By the time of arguments before the Commercial Court, however, Neway’s written submissions identified only one prior art: IN’127. The court drew an important procedural line here. Once written submissions are filed, the scope of an appeal is ordinarily confined to what was argued below, not everything pleaded. An appellate court examines whether the order under challenge is correct in respect of the issues actually argued, not those merely set out in the pleadings.
More critically, Neway provided no comparative claim analysis between IN’417 and IN’127: no mapping of features, no element-by-element comparison, nothing to demonstrate anticipation or obviousness. The court endorsed the Delhi High Court’s recent holding in Zydus Lifesciences Ltd v. E.R. Squibb & Sons LLC (MANU/DE/0186/2026) on the necessity of product-to-claim mapping in patent infringement proceedings. Rule 3(A)(ix) of the High Court of Delhi Rules Governing Patent Suits, 2022 specifically requires such a chart as part of a plaint; the same discipline applies with equal force to an invalidity defence. Without it, no credible challenge is made out. Neway’s bare assertion that the claimed features in IN’417 appeared in IN’127, unsupported by any comparative analysis, could not discharge the onus it carried.
Design Registration Offers No Shelter from Patent Liability
On the infringement question for IN’417, the Commercial Court identified eight core functional features shared between Neway’s product and the patented claims, including the tamper-evident tear band, the dual locking mechanism, teeth on the container periphery, the tear knob, leak-proof sealing, and stackability provisions. It applied the doctrine of pith and marrow and the doctrine of equivalence, finding that the dimensional and structural variations in Neway’s product were engineering tweaks, not material departures from the patented combination.
The court then highlighted a proposition of direct commercial relevance across the packaging industry. Neway’s product was registered under the Designs Act, 2000, but that registration conferred no right to appropriate the substance of a patented invention. Design protection and patent protection occupy distinct statutory territories. A design registration goes to the visual or aesthetic features of an article; it does not and cannot authorise the reproduction of a patented functional combination. Where a product embodies the essential claims of a registered patent, the existence of a design registration for that product is simply irrelevant to the infringement analysis. The Delhi High Court affirmed the Commercial Court’s findings on both infringement and invalidity for IN’417, and dismissed Neway’s appeal.
The IN’724 Invalidity Analysis: A Flawed Comparison
The second appeal raised more serious errors. The Commercial Court had found that IN’724 was vulnerable to invalidity under Sections 2(1)(j) and 2(1)(ja) (which define “invention” and “inventive step”), and under Section 3(d) and Section 64(1)(e), primarily because Mold-Tek had previously held a patent, IN’276, for a “Pull-Up Spout with Tamper-Proof Seal” that had lapsed in 2008.
The Delhi High Court found this comparison to be fundamentally misconceived. IN’724 claims a lid into which a spout is incorporated as one of its functional elements. IN’276 was a claim for a pull-up spout as a standalone product. The Commercial Court compared the two patents by focusing on similarities between their respective spout elements, without addressing the essential point that the claim scope of IN’724 is materially broader: it covers a complete lid assembly, not merely a component of it. That failure to apply mind to the actual claim scope of the suit patent made the invalidity analysis unsustainable, and the court remanded the issue for fresh consideration.
Mixing up Infringement and Invalidity: A Legal Error
The court was equally direct in addressing paragraph 34 of the impugned order, where the Commercial Court held that there was “no infringement” because the suit patent IN’724 was “generic in nature” and suffered from lack of novelty and inventive step. This is not the law. Infringement and invalidity are independent legal questions. A finding that a patent may be vulnerable to invalidity does not extinguish the finding that infringement has occurred. It provides a defence under Section 107 that, if made out, would prevail over the infringement finding. The two enquiries run in parallel; one does not negate the other.
Burden of Proof and the Credible Challenge Standard
The court also corrected the Commercial Court’s allocation of the burden of proof. The onus to establish infringement rests on the plaintiff. Once a prima facie case of infringement is established, the onus shifts to the defendant to make out a credible challenge to validity under Section 107 read with Section 64. The Commercial Court, in paragraph 36 of its order, had effectively imposed on the plaintiff the burden of disproving the invalidity raised by the defendant, a reversal the Delhi High Court rejected as contrary to the scheme of the Patents Act.
Findings
In view of the observations and the arguments presented by both the parties, the Delhi High Court held that:
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- Neway failed to make out a credible challenge to the validity of IN’417 under Section 107 read with Section 64 of the Patents Act, having provided no comparative claim analysis between IN’417 and the prior art IN’127
- Neway’s product infringed IN’417, applying the doctrine of pith and marrow and the doctrine of equivalence, and a design registration under the Designs Act, 2000 conferred no right to appropriate the substance of a patented invention and afforded no defence to the infringement claim
- Neway’s appeal (FAO (Comm) 235/2025) was dismissed
- The finding that Neway’s product infringed IN’724 was upheld
- The Commercial Court’s invalidity analysis of IN’724 was set aside: its comparison of IN’724 with IN’276 failed to account for the material difference in claim scope between a lid incorporating a spout and a standalone spout patent
- The Commercial Court erred in treating a vulnerability to invalidity as negating infringement, and in placing the burden of disproving invalidity on the plaintiff rather than on Neway as the defendant asserting the defence
- The invalidity of IN’724 vis-à-vis prior art was remanded to the Commercial Court for fresh consideration, with all questions of fact and law left open to both parties
- Mold-Tek’s appeal (FAO (Comm) 241/2025) was disposed of accordingly, with no order as to costs
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Case Citation: Neway Industries Pvt. Ltd. v. Mold-Tek Packaging Limited (FAO (Comm) 235/2025) and Mold-Tek Packaging Ltd. v. Neway Industries Pvt. Ltd. (FAO (Comm) 241/2025), High Court of Delhi, decided on 28 January 2026. Available at https://indiankanoon.org/doc/132390569/
Authored by Gaurav Mishra, Patent Attorney, BananaIP Counsels