INDIA Law and Practice Contributed by: Anu Paarcha, Aniruddh Bhatia, Mishthi Dubey and N Parvati, Saikrishna & Associates
development, and further clarifies that the rights of a patentee under Section 48 of the Act are subject to the provisions of Section 107A. • Parallel importation: Section 107A(b) of the Act further permits an entity to import a pat- ented product into India if it is duly authorised under the law to produce, sell and distribute the product in India. • Gillette defence: under said defence, a defendant may assert that its activities alleged by the plaintiff to be infringing are essentially covered by the prior art which encompasses all features of the claimed subject matter. • Innocent infringement: a defence of inno- cent infringement may also be taken by the defendant and may play a crucial role in reducing the accounts of profits and/or damages that may be granted against such defendant. For assertion of said defence, the defendant has to prove that, on the date of infringement, they were not aware and did not have any reasonable grounds to believe that the plaintiff’s patent existed. • An additional layer of defence available in standard essential patent (SEP) matters is for the defendant to contend that they were will- ing to obtain a FRAND licence from the SEP owner but were refused. • Unclean hands: a common law principle grounded in inequitable conduct, an argu- ment of unclean hands may be brought by the defendant, and evidence may include instances in which a patent is obtained by false suggestion or misrepresentation, or any other acts which attribute falsehood to the plaintiff. • Delays/laches: a preliminary injunction may not be granted in a case where there is acquiescence or unexplained delay, without cause and which causes material prejudice
to the defendant. However, delay alone is no defence and it is only delay that amounts to demonstrated material prejudice to the defendant that qualifies as a ground for rejec- tion of preliminary injunction. Delay along with acquiescence will also lead to denial of permanent injunction. • Estoppel: as regards estoppel, courts often consider statements made by a patentee in relation thereto, or a corresponding patent in other countries, at the prosecution stage. In view of this, a plaintiff may be estopped from claiming otherwise before the courts in India (prosecution history estoppel). 3.6 Role of Experts In a patent infringement action, parties may file affidavits of technical experts and rely on their evidence to substantiate their case at trial, or even at the stage of filing the suit, to substantiate their case of infringement. However, the scope of the expert evidence during trial should be rooted in the pleadings filed in the suit. Under Section 115 of the Act, scientific advis- ers may be appointed by the court suo moto to advise in its inquiry or report on any question of fact or of opinion (not involving a question of interpretation of law). In particular, the Delhi High Court in Merck Sharpe & Dohme v Glenmark Pharmaceuticals, (2015) 6 SCC 807 observed that, in highly technical matters involving chemi- cal compounds, the court must rely on the opin- ion of experts in the field whose testimony is found trustworthy and reliable and is supported by documents. Notably, for matters to be filed before the Delhi High Court, Rule 4 of the Patent Suit Rules also provides that the documents to be filed with the suit may include expert reports for infringement analysis as well as a laboratory analysis report, if any.
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