Summary
Mold Tek filed a case for infringement of its patents relating to tamper-proof plastic lids, and secured an interim injunction. The Commercial Court vacated the injunction, placing the burden of establishing validity on the patentee. The Delhi High Court reversed this, clarifying that it is the defendant’s burden to raise a credible invalidity defence under Section 107.
Background & Facts
Mold Tek Packaging Limited sued Pronton Plast Pack Pvt. Ltd. in CS (Comm) 668/2023 for infringing Indian Patent Nos IN 401417 and IN 298724. The suit patents relate to tamper-proof plastic lids with spouts, used for sealing containers transporting food.
On 20 December 2023, the Commercial Court granted Mold Tek an ex-parte injunction, finding that Pronton’s product had “constructional and functional features similar” to the patented lids.
Pronton filed an application under Order XXXIX Rule 4 CPC seeking vacation of the injunction. On 2 May 2024, the Commercial Court allowed that application, holding that Mold Tek failed to establish novelty and suppressed material facts. Mold Tek appealed.
Issues for the Court
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- Whether the Commercial Court correctly applied the law in assessing infringement and patent validity at the interim stage.
- Whether the Commercial Court erred in shifting the burden of proving validity to the patentee.
- Whether the defendant raised a credible challenge under Section 107 of the Patents Act.
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Key Arguments
Mold Tek argued that the Commercial Court failed to compare the defendant’s product with the claims of the suit patents, and instead engaged in a product-to-product comparison. It also contended that the court wrongly placed the burden of proving validity on the patentee contrary to Section 107.
Pronton argued that its product was materially different and relied on prior art to question the patents’ novelty. It also alleged that Mold Tek misrepresented the comparison by showing the wrong product.
Court’s Analysis
The Court held that patent infringement analysis must involve a comparison between the defendant’s product and the granted claims, not between the physical products (¶20–21). The Commercial Court’s approach to rely solely on physical comparison was erroneous.
On the burden of proof, the Court reiterated that Section 107(1) permits a defendant to raise invalidity as a defence, but the burden to make a credible challenge lies on the defendant (¶26). As per the Court, the Commercial Court wrongly assumed that the patentee must prove novelty at the interim stage, which reverses the statutory burden.
The Court also clarified that the validity of the initial ex-parte injunction granted on 20 December 2023 was not under challenge before it and therefore remained intact (¶30–32).
Findings & Order
The Court held that the Commercial Court:
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- Applied the wrong test for infringement.
- Shifted the statutory burden of proof to the plaintiff.
- Failed to assess whether the defendant’s invalidity defence was credible.
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Accordingly, the order dated 2 May 2024 was set aside. The matter was remanded for fresh consideration under Order XXXIX. The interim injunction granted on 20 December 2023 was restored.
Relevant Paragraphs
On infringement analysis:
“…the comparison has to be between the product of the defendant and the complete specifications in the suit patent of the plaintiff.” (¶20) On burden under Section 107:
“…the learned Commercial Court has…completely shifted the statutory onus…to the plaintiff… This is a fundamentally erroneous understanding of the statutory and legal position…” (¶26) On limits of appellate power:
“We cannot tinker, in this appeal, with the ex parte ad interim order dated 20 December 2023. That order is not under challenge before us.” (¶30)
Disclaimer: This case note has been prepared based on the author’s understanding, views, and conclusions. Opinions of others may differ. Note that the case was partially generated using a proprietary AI application.
Citation: Mold Tek Packaging Ltd. v. Pronton Plast Pack Pvt. Ltd., FAO (COMM) 114/2024, Delhi High Court, decided 11 July 2025. Available at: https://indiankanoon.org/doc/67269878/ (last visited July 16, 2025).