FAO (COMM) 235/2025 and another connected matter Page 1 of 20

$~12 & 14

* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ FAO (COMM) 235/2025

NEWAY INDUSTRIES PVT. LTD. .....Appellant

Through: Mr. Vikas Khera, Ms. Sneha

Sethia and Mr. Rohit, Advs.

versus

MOLD-TEK PACKAGING LIMITED .....Respondent

Through: Mr. Jayant K. Mehta, Sr. Adv.

with Mr. Ashutosh Kumar, Mr. Vinod

Chauhan, Ms. Radhika Pareva, Mr. Adithya

B., Mr. Yagya Passi, Mr. Ayush Sharma and

Mr. Om, Advs.

14

+ FAO (COMM) 241/2025, CM APPL. 53979/2025, CM APPL.

53981/2025, CM APPL. 53982/2025 & CM APPL. 53983/2025

MOLD TEK PACKAGING LTD .....Appellant

Through: Mr. Jayant K. Mehta, Sr. Adv.

with Mr. Ashutosh Kumar, Mr. Vinod

Chauhan, Ms. Radhika Pareva, Mr. Adithya

B., Mr. Yagya Passi, Mr. Ayush Sharma and

Mr. Om, Advs.

versus

NEWAY INDUSTIES PVT. LTD. .....Respondent

Through: Mr. Vikas Khera, Ms. Sneha

Sethia and Mr. Rohit, Advs.

CORAM:

HON'BLE MR. JUSTICE C. HARI SHANKAR

HON'BLE MR. JUSTICE OM PRAKASH SHUKLA

JUDGMENT (ORAL)

% 28.01.2026

FAO (COMM) 235/2025 and another connected matter Page 2 of 20

C. HARI SHANKAR, J.

The lis

1. Indian Patents IN 401417

1

, for a “Tamper-Evident Leak Proof

Pail closure System” and IN 298724

2

for a “A Tamper Proof Lid

Having Spout for Containers and Process for Its Manufacture”

3

stand

registered in favour of Mold Tek Packaging Ltd

4

. Mold Tek alleged

that Neway Industries Pvt Ltd

5

was manufacturing and selling

products which infringed the suit patents without any licence from it,

within the meaning of Section 48

6

of the Patents Act, 1970.

2. Mold Tek, therefore, has instituted CS (Comm) 01/2024

7

against Neway, praying for a decree of permanent injunction

restraining Neway from manufacturing or dealing in any product

which would infringe the suit patents.

3. The suit was accompanied by an application under Order

XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908

8

, seeking

an interim injunction against Neway, restraining continued

1

“IN’417” hereinafter

2

“IN’724” hereinafter

3

“the suit patents” collectively hereinafter

4

“Mold Tek” hereinafter

5

‘Neway” hereinafter

6

48. Rights of patentees.—Subject to the other provisions contained in this Act and the conditions

specified in Section 47, a patent granted under this Act shall confer upon the patentee—

(a) where the subject-matter of the patent is a product, the exclusive right to prevent third

parties, who do not have his consent, from the act of making, using, offering for sale, selling or

importing for those purposes that product in India;

(b) where the subject-matter of the patent is a process, the exclusive right to prevent third

parties, who do not have his consent, from the act of using that process, and from the act of using,

offering for sale, selling or importing for those purposes the product obtained directly by that

process in India:

7

Mold Tek Packaging Ltd v. Neway Industries Pvt Ltd, also referred to, hereinafter, as “the suit”

8

“CPC” hereinafter

FAO (COMM) 235/2025 and another connected matter Page 3 of 20

infringement of the suit patents, pending disposal of the suit.

4. By ad interim order dated 8 January 2024, the learned District

Judge (Commercial Court)-01, Patiala House

9

granted an ad interim

injunction in favour of Mold Tek and against Neway.

5. Neway moved an application under Order XXXIX Rule 4 of the

CPC, for vacation of the ad interim injunction granted on 8 January

2024.

6. By the impugned order dated 20 August 2025, the learned

Commercial Court has confirmed the ad interim order of injunction

qua IN’417 and has vacated the ad interim order qua IN’724.

7. Mold Tek and Neway are, therefore, both in appeal before us.

Neway assails the impugned order to the extent it grants interim

injunction qua IN’417. Mold Tek assails the order to the extent it

rejects the prayer for interim injunction qua IN’724.

8. We have heard Mr. Vikas Khera for Neway and Mr. Jayant

Mehta, learned Senior Counsel for Mold Tek, at length.

9. Neway pleaded, in the case of each of the suit patents, that its

product did not infringe the patent and, additionally, that the patent

itself was vulnerable to being revoked under Section 64

10

of the

9

“the learned Commercial Court” hereinafter

10

64. Revocation of patents.—

(1) Subject to the provisions contained in this Act, a patent, whether granted before or after

the commencement of this Act, may, be revoked on a petition of any person interested or of the

Central Government or on a counter-claim in a suit for infringement of the patent by the High Court

FAO (COMM) 235/2025 and another connected matter Page 4 of 20

Patents Act, availing the liberty to raise such a defence as provided by

Section 107

11

thereof.

10. We proceed, now, to deal with the appeals individually.

FAO (COMM) 235/2025 [Neway Industries Pvt Ltd v. Mold Tek

Packaging Ltd]

11. Neway, by this appeal, assails the impugned order to the extent

it allows the Order XXXIX application of Mold Tek in respect of

IN’417.

12. The learned Commercial Court has, while arriving at the

impugned decision, individually addressed the aspects of the

infringement and invalidity.

13. Re. plea of invalidity

on any of the following grounds, that is to say,—

(a) that the invention, so far as claimed in any claim of the complete specification,

was claimed in a valid claim of earlier priority date contained in the complete

specification of another patent granted in India;

*****

(d) that the subject of any claim of the complete specification is not an invention

within the meaning of this Act;

(e) that the invention so far as claimed in any claim of the complete specification is

not new, having regard to what was publicly known or publicly used in India before the

priority date of the claim or to what was published in India or elsewhere in any of the

documents referred to in Section 13;

(f) that the invention so far as claimed in any claim of the complete specification

is obvious or does not involve any inventive step, having regard to what was publicly

known or publicly used in India or what was published in India or elsewhere before the

priority date of the claim;

11

107. Defences, etc. in suits for infringement.—

(1) In any suit for infringement of a patent, every ground on which it may be revoked under

Section 64 shall be available as a ground for defence.

(2) In any suit for infringement of a patent by the making, using or importation of any

machine, apparatus or other article or by the using of any process or by the importation, use or

distribution of any medicine or drug, it shall be a ground for defence that such making, using,

importation or distribution is in accordance with any one or more of the conditions specified in

Section 47.

FAO (COMM) 235/2025 and another connected matter Page 5 of 20

13.1 On the aspect of invalidity, the learned Commercial Court has

held that Neway did not provide any comparative analysis between the

claim and the suit patent IN’417 and the prior art patent application IN

288127

12

, so as to establish a credible challenge to the validity of the

suit patent vis-à-vis the said prior art. We may, in this context,

reproduce paras 18 to 20 of the impugned order, thus:

“18. The defendant’s principal objection is that the plaintiff’s

product lacks novelty and inventive step, alleging prior use of

similar products patented in the United States and other

jurisdictions and they are using the same product i.e. “Tamper-

Evident Leak Proof Pail Closure Systems" way prior then the

plaintiff. One of the US patent no. 5,307,948 which is filed by the

defendant in which the product has the tamper proof and tamper

evident closure system in for the use with a plastic container body

and lid of the type wherein the container body has an opening

defined by the continuous side wall and the lid has a depending

skirt terminating at a lower edge, with the skirt overlapping the

side wall adjacent the opening when the lid covers the opening.

The closure system comprises a shield flange projecting outwardly

from the side wall of the container body immediately adjacent the

lower edge of the lid when the lid covers the opening of the

container body and a tamper evidencing band frangible connected

to the shield flange along a separation path spaced from the side

wall of the container body. The tamper-evidencing band includes a

blocking lug substantially covering the cut-out section of the shield

flange when the tamper evidencing band is connected to the shield

flange. Similarly in another US Patent no. US8,251,242 B2 in

which a container is having a base, a lid, and a tamper-evident,

closed band. The base includes a sealing section and defines a

space and an opening at a periphery that has an outwardly

extending base flange with a contact surface. The lid has a lid

sealing section and an outwardly extending lid flange having a

contact surface. The base sealing section and the lid sealing section

form a reclosable snap fit. The lid and base flanges can also include

a removed portion to create an increased distance between contact

surfaces on the lid and base flanges. The tamper-evident, closed

band can attach at a first end to one of the base and lid, with a free

second end, can be substantially detachable from the base or lid as

a closed band, and can also extend to substantially prevent direct

manual access to the lid and base flanges.

12

“IN’127” hereinafter

FAO (COMM) 235/2025 and another connected matter Page 6 of 20

19. The plaintiff’s Indian Patent IN’417 discloses a container

with a lid locking system involving a pilfer-proof arrangement

designed to provide leak-proof and tamper-evident sealing,

ensuring safe and secure storage and transportation of contents. It

incorporates coordinated inner and outer locks on the lid engaging

with corresponding portions of the container, a tamper-evident

peel-off ring with a pull tab that can be removed in an anti-

clockwise direction to separate the lid into upper and lower parts,

allowing user-friendly first opening and reuse. A gasket between

the container and lid ensures complete leak-proofing, shock

absorption, protection against ambient temperature variations, and

stable stacking. In contrast, the defendant’s US Patent

No.5,307,948 relates to a tamper-proof closure wherein a lid skirt

overlaps the container side wall and a shield flange supports a

frangibly connected tamper-evidencing band with a blocking lug,

but it lacks the dual-locking system, gasket sealing, and specific

anti-clockwise tear-away mechanism of IN’417. Similarly, US

Patent No. 8,251,242 B2 provides a base, lid, and tamper-evident

closed band with a reclosable snap-fit, where the closed band

prevents direct manual access to the lid and base flanges, but it

does not combine the features of coordinated inner and outer locks,

anti-clockwise peel-off ring, leak-proof gasket, and environmental

resistance as claimed in the plaintiff’s invention.

20. I have carefully examined all the prior patents relied upon

by the defendant to establish prior art. While certain prior products

exhibit similarities, they do not replicate the distinctive

combination of features claimed in the plaintiff’s patent. The

defendant has neither produced any comparative analysis between

Patent IN’417 and the plaintiff’s earlier Patent Application No. IN

288127 nor furnished any document establishing the existence of

the said earlier patent to substantiate its plea of lack of novelty. I,

therefore, find that Patent IN’417 embodies a novel and inventive

tamper-evident closure container combination, distinct from the

prior patents cited by the defendant.”

13.2 Having heard learned Counsel, we find no reason to disagree

with this finding of the learned Commercial Court.

13.3 Mr. Mehta points out, in this connection, that Neway did not,

during arguments before the learned Commercial Court, press the

aspect of invalidity except with respect to IN’127, and that, vis-à-vis

IN’127, Neway did not even provide any material to indicate that the

FAO (COMM) 235/2025 and another connected matter Page 7 of 20

claims in IN’417 were anticipated, or obvious, from those in IN’127.

13.4 We find this to be correct.

13.5 We may enter a clarification at this point. Oftentimes, it is seen

that though, in pleadings, several points are raised, arguments are

restricted only to some. In the present case, for example, though the

written statement filed by Neway alleged invalidity of IN’417 vis-à-

vis various prior arts, the written submissions filed before the learned

Commercial Court essentially asserted only IN’127 as the prior art

vis-à-vis which IN’417 was anticipated and/or obvious. The purpose

of requiring Counsel to place written submissions on record is,

oftentimes, not to assist the Court, which is peopled by judges who are

generally more than competent to adjudicate on the lis before them

without the assistance of any submissions in writing. It is so as to

enable Counsel to identify the issues which are urged and asserted

during arguments. Once the submissions are reduced to writing, it is

ordinarily not open to the party to, in appeal, ventilate issues which

are not captured in the written submissions, or in the recording of the

arguments advanced before the Court in the order under challenge, on

the ground that these issues were pleaded. It is open to a Counsel to

argue only some of the issues or grounds which are urged in

pleadings, and, if that is done, the appellate Court, or any other forum

before whom the order passed is brought in challenge, would examine

the correctness of the order vis-à-vis the issues which were argued

before the Court which passed the order.

13.6 There is, in fact, no comparative analysis of the claim in the suit

FAO (COMM) 235/2025 and another connected matter Page 8 of 20

patent IN’417 with the prior art IN’127, though Neway alleged that

the invention in IN’417 was anticipated by, and was obvious from, the

disclosures in IN’127.

13.7 We have gone through the arguments of Neway as noted in the

impugned order, the written submissions filed by Neway before the

learned Commercial Court as well as the written statement filed

Neway by way of response to the plaint to ascertain whether there

was, at any point, any comparison made between the claim in IN’127

and that in IN’417, so as to substantiate the allegation of anticipation

and obviousness. There is, in fact, none.

13.8 No credible challenge to the validity of the suit patent, within

the meaning of Section 107 of the Patent’s Act read with Section 64

thereof could, therefore, be said to have been made out by Neway

before the learned Commercial Court.

13.9 We have, in our recent decision in Zydus Lifesciences Ltd v.

E.R. Squibb & Sons LLC

13

, had occasion to advert to the necessity of

product-to-claim mapping, as a necessary element of any patent

infringement suit, except where it is impossible to do so. In this

regard, we have observed and held thus:

“7. Rule 3(A)(ix)

14

of the High Court of Delhi Rules

13

MANU/DE/0186/2026

14

A. Plaint:

The Plaint in an infringement action shall, to the extent possible, inter alia, contain a description of

the following:

*****

(ix) Precise claims versus product (or process) chart mapping including claim chart

mapping through standards;

FAO (COMM) 235/2025 and another connected matter Page 9 of 20

Governing Patent Suits, 2022

15

specifically requires product-to-

claim mapping as one of the necessary ingredients of a patent

infringement suit. However, the impugned judgment holds that the

words “to the extent possible”, in Rule 3A may, in a quia timet

action, justify doing away with the requirement of product-to-

claim mapping altogether.

8. This is of vital importance, as Section 48 of the Patents

Act, 1970 confers, on the holder of a registered patent, the

exclusive right to prevent third parties from using, offering, selling

or importing that product in India, without consent of the patentee.

The issue of whether, in the absence of any mapping of the

defendant’s product to the plaintiff’s granted claim in the suit

patent, the defendant’s product can be said to be that product,

therefore, requires serious consideration. Especially so as the

product is a life-saving drug needed for cancer therapy.

*****

25.2 In the case of a product patent, therefore, Section 48

confers, on the patentee, exclusive right to prevent third parties

from making, using, offering, selling or importing that product in

India, without consent of the patentee. “That product”, obviously,

refers to the product which is subject matter of the patent. It is for

this reason that mapping of the product to the granted claim in the

patent becomes indispensable, for it is only then that it can be said

that the product in which the defendant is dealing is the product

which is subject matter of the plaintiff’s patent.”

13.10 We, therefore, find no error in the view expressed by the

learned Commercial Court in para 20 of the impugned order.

14. Re. infringement

14.1 On the aspect of infringement, the learned Commercial Court

has, in paras 25 and 26, clearly set out the similar features between the

Neway’s product and the claim in the suit patent, thus:

“25. Although the defendant’s product exhibits dimensional,

15

“the DHC Patent Suits Rules” hereinafter

FAO (COMM) 235/2025 and another connected matter Page 10 of 20

structural, and stylistic differences but the core functional elements

that constitute the inventive concept of the plaintiff’s IN’417 patent

are still present. These include: -

i) A tamper-evident tear band positioned between

primary and secondary lid sections.

ii) A primary and secondary locking mechanism

functioning to secure the lid to the container.

iii) Teeth on the periphery on the closure of the

container

iv) Structural arrangement allowing the upper lid

portion to be removed while the lower portion remains

attached.

v) Stackability features integrated into the container

and lid design.

vi) To facilitate the opening the pail or container

provided with a tear band and tear knob.

vii) Leak-proof sealing means (albeit defendant claims

improved performance).

viii) A sealing arrangement between the lid and the

container designed to prevent leakage of contents under

normal storage and transportation conditions

26. Minor variations in dimensions, tooth configuration, or

ancillary features etc., which do not affect the essential mode of

operation of the invention, cannot absolve the defendant from

liability for infringement. On comparison, and upon applying the

doctrine of pith and marrow as well as the doctrine of equivalence,

the modifications introduced in the defendant’s product are found

to be mere engineering variations and not material departures from

the patented combination. The essential features of Patent IN’417

stand embodied in the defendant’s product. It is further relevant to

note that while the plaintiff’s invention is protected under the

Patents Act, the defendant’s product is registered under the

Designs Act, which does not confer any right to appropriate the

substance of a patented invention. In view of the above, the

defendant’s product, prima facie, falls within the scope of the

plaintiff’s patented claims infringement.”

14.2 Mr. Khera has not been able to disabuse the Court of the

FAO (COMM) 235/2025 and another connected matter Page 11 of 20

correctness of these findings. His only repeated assertion is that the

features noted in para 25 are also part of the prior art IN’127.

14.3 That, in our view, cannot constitute any basis to controvert the

findings of infringement. Besides, we have already expressed our

agreement with the learned Commercial Court in its view that Neway

did not make any effort to demonstrate that the suit patent was

obvious from the prior art IN’127. The onus, in this regard, was

clearly on Neway, and, as Neway failed to discharge it, we can find no

fault with the decision of the learned Commercial Court.

14.4 As such, we find no reason to interfere with the findings of the

learned Commercial Court on the aspect of infringement either.

14.5 The impugned judgment, to the extent it grants injunction in

favour of Mold-Tek and against Neway following a finding of

infringement of the Mold-Tek’s suit patent IN’417, therefore, does not

call for any interference.

14.6 FAO (Comm) 235/2025 is, therefore, dismissed.

FAO (Comm) 241/2025 [Mold Tek Packaging Ltd v. Neway

Industries Pvt Ltd]

15. By this appeal, Mold Tek challenges the impugned order dated

20 August 2025 to the extent it rejects Mold Tek’s claim for

injunction against Neway for infringement of IN’298724.

FAO (COMM) 235/2025 and another connected matter Page 12 of 20

16. Re. infringement

16.1 The learned Commercial Court has found, on infringement, in

favour of Mold Tek and against Neway, and holds Neway’s product to

infringe IN’724.

16.2 There is no cross-appeal by Neway on this aspect. Nor has

Neway filed any cross-objection on this aspect.

16.3 As such, the findings on infringement, by Neway’s product, of

Mold-Tek’s suit patent IN’724 are affirmed.

17. Re. invalidity

17.1 On the aspect of invalidity, the findings of the learned

Commercial Courts are contained in paras 27 to 33 of the impugned

judgment, which read thus:

“27. Learned Counsel for the plaintiff has submitted that the suit

patent IN’724 relates to a novel and inventive product, namely a

tamper-proof lid having a leak-proof spout for containers, which

provides for a leak-proof pull-up spout assembly incorporating a

special ‘M’-shaped contour at the circular periphery to ensure a

perfect leak-proof joint when assembled with the main lid and

adapted to support the pull-up operation. It is further contended

that an inverted ‘U’-shaped contour in the spout closure facilitates

a leak-proof fit with the base by means of a threaded

interconnection, thereby creating a leak-proof barrier through the

spout base orifice. In response, the defendant has produced

material to demonstrate prior use of similar products by third

parties and has contended that the plaintiff’s product is generic in

nature and lacks novelty.

28. From the perusal of the record, it is evident that the plaintiff

had previously filed an application for Patent No. IN 207276 on

FAO (COMM) 235/2025 and another connected matter Page 13 of 20

28.09.1998 for an invention titled “A Pull-Up Spout with Tamper-

Proof Seal”, which subsequently ceased on 29.09.2008. A

comparison of the earlier patent with the present suit patent IN’724

reveals that both inventions are directed towards providing lids

with tamper-proof characteristics to ensure the security and

integrity of containers. Each incorporates a pull-up spout

mechanism enabling controlled dispensing of contents, along with

structural provisions to achieve leak-proof sealing through shrink-

fit areas, tail rings, and threaded engagements. Both patents further

emphasize the pull-up operation of the spout closure to facilitate

convenient opening and closing. The overall functional purpose in

both cases remains identical namely, to provide a secure, tamper-

evident, and leak-proof solution for dispensing from containers.

29. It is therefore evident that the plaintiff had previously held

a patent on a substantially similar product, which fact has not been

disclosed in the present pleadings. This indicates the existence of

prior art. The defendant has accordingly argued that the features

claimed in Patent IN’724 are generic and devoid of inventive step.

30. From the documents produced by the defendant, it further

emerges that there are several players in India as well as in foreign

countries manufacturing and marketing similar products, namely

tamper-proof lids with pull-up spouts, designed to provide a leak-

proof assembly of the spout in an interlocked arrangement with the

main lid and incorporating tamper-evident features. As regards the

comparative analysis of the plaintiff’s and defendant’s products,

the plaintiff has placed on record a claim mapping chart indicating

that the defendant’s product embodies the essential features of the

suit patent. No corresponding claim mapping has been filed by the

defendant in respect of Patent IN’724.

31. On a prima facie comparison of the plaintiff’s Patent

IN’724 with the features of the defendant’s impugned product, it

appears that the defendant’s product incorporates all the essential

elements claimed in the suit patent. The material on record

demonstrates the presence of a tamper-proof lid having a leak-

proof and pilfer-proof spout, a spout base positioned within a

shrink-fit area accompanied by a tail ring for additional sealing, a

spout closure with a downwardly protruding cylindrical portion

and an inverted ‘U’-shaped contour, as well as a circular gripper

and M-shaped configuration to ensure leak-proof assembly and

support for pull-up operation.

32. Ld. Counsel for defendant relied upon judgment F.

Hoffmann-LA Roche Ltd. and Anr. v. Cipla Ltd.

16

wherein it was

16

2009 (110) DRJ 452 (DB)

FAO (COMM) 235/2025 and another connected matter Page 14 of 20

held that: -

“52. Given the scheme of Patents Act it appears to this

Court that it does contemplate multiple challenges to the

validity of a patent. Unlike Section 31 of the Trade Marks

Act which raises a prima facie presumption of validity,

Section 13(4) of the Patents Act 1970 specifically states

that the investigations under Section 12 “shall not be

deemed in any way to warrant the validity of any patent.”

Section 48 of the Act also is in the form of a negative right

preventing third parties, not having the consent of the

patent holder, from making, selling or importing the said

product or using the patented process for using or offering

for sell the product obtained directly by such process. It is

also made subject to the other provisions of the Act. This is

very different from the scheme of the Trade Marks Act as

contained in Section 28 thereof. Section 3(d) itself raises

several barriers to the grant of a patent particularly in the

context of pharmaceutical products. It proceeds on the

footing inventions are essentially for public benefit and that

non-inventions should not pass off as inventions. The

purpose of the legal regime in the area is to ensure that the

inventions should benefit the public at large. The mere

registration of the patent does not guarantee its resistance to

subsequent challenges. The challenge can be in the form of

a counter claim in a suit on the grounds set out in Section

64. Under Sections 92 and 92A the Central Government

can step at any time by invoking the provision for

compulsory licencing by way of notification. Therefore, the

fact that there is a mechanism to control the monopoly of a

patent holder (Section 84 and Section 92) and to control

prices (by means of the drug price control order) will not

protect an invalid grant of patent.”

33. Upon a careful consideration of the records, including the

prior art and evidence of similar products in the market, it is

evident that the features claimed in Patent IN’724 such as a

tamper-proof lid with a pull-up spout, leak-proof sealing through

shrink-fit areas and tail rings, threaded engagement for securing

the spout closure, and the provision of wings to facilitate

tightening and dispensing are not exclusive to the plaintiff’s

invention. These features constitute common technical solutions

employed in the packaging industry to achieve the standard

objectives of tamperevidence, leak prevention, and controlled

dispensing. The existence of multiple manufacturers producing lids

with comparable configurations demonstrates that such features are

generic and form part of routine design practice in the trade.

Consequently, the subject patent does not disclose an invention

FAO (COMM) 235/2025 and another connected matter Page 15 of 20

within the meaning of Sections 2(1)(j) and 2(1)(ja) of the Patents

Act, and falls within the bar under Section 3(d). The patent is

further vulnerable to revocation under Section 64(1)(e) for lack of

novelty and inventive step. Therefore, the plaintiff cannot claim an

exclusive monopoly over such common features.”

17.2 So far as paras 27 and 33 are concerned, the learned

Commercial Court, while referring to prior art, makes no reference to

the prior art to which it makes reference while returning findings of

lack of novelty and obviousness.

17.3 The only prior art which is specifically addressed by the learned

Commercial Court is Mold-Tek’s own prior patent IN 207276

17

,

which is addressed in para 28 of the impugned order.

17.4 Vis-à-vis these findings, we are in agreement with Mr. Mehta

that the learned Commercial Court has not properly appreciated the

claim in the suit patent vis-à-vis the said prior art IN’276, as the suit

patent claims a lid of which a spout is a part, whereas IN’276 is a

claim for a spout per se. A reading of para 28 of the impugned order

reveals that the learned Commercial Court has only addressed what it

perceives to be similarities in the two spouts, without exhibiting

application of mind to the fact that the suit patent is for a lid

incorporating a spout and not merely for a spout per se.

17.5 We do not wish to state anything more, so far as the aspect of

invalidity of the suit patent IN’274 vis-à-vis prior art is concerned, as

we are of the opinion that these aspects required to be concerned de

novo by the learned Commercial Court. However, so far as the aspect

17

“IN’276” hereinafter

FAO (COMM) 235/2025 and another connected matter Page 16 of 20

of infringement is concerned, we uphold the findings of the learned

Commercial Court.

17.6 Needless to say, should the learned Commercial Court find that

the suit patent IN’724 is in fact vulnerable to invalidity within the

meaning of Section 107 read with Section 64 of the Patents Act, that

finding would prevail over the finding of infringement as Section 107

offers a defence in every case of the infringement of a patent.

18. Re. para 34 of impugned order

18.1 We may note, here, that, in para 34 of the impugned judgment,

it is noted by the learned Commercial Court thus:

“34. In light of the foregoing, this Court is of the view that there

is no infringement on the part of the defendant, as the plaintiff’s

this patent is generic in nature, suffers from lack of novelty and

inventive step, and is subject to prior art and prior use by multiple

players in the industry.”

(Emphasis supplied)

18.2 The afore-extracted finding of para 34 is, strictly speaking, not

legally correct.

18.3 In returning this finding, learned Commercial Court appears to

have conflated the aspects of infringement and invalidity. The finding

that the respondent’s suit patent is generic or suffers from lack of

novelty or inventive step cannot impact the existence of infringement.

To the extent that para 34 holds that there is no infringement on the

part of the appellant because the suit patent suffers from want of

novelty, therefore, the order cannot sustain.

FAO (COMM) 235/2025 and another connected matter Page 17 of 20

19. Reversal of burden of proof

We also agree with Mr. Mehta’s contention that, in para 36 of the

impugned judgment, the learned Commercial Court has effectively

reversed the burden of proof in establishing a plea of invalidity within

the meaning of Section 107. In the Patents Act, the onus to prove

infringement lies on the plaintiff. However, once a prima facie case of

infringement is made out, as Section 107 provides a defence in cases

of infringement, where a credible challenge to the validity to the suit

patent on one or more of the grounds envisaged in Section 64 is made

out, the onus in that regard has to be on the defendant and not on the

plaintiff. It is, therefore, for the defendant to make out a credible

challenge to the validity of the suit patent.

20. Accordingly, we dispose of this appeal in the following terms:

(i) The finding that Neway’s product infringes Mold Tek’s

suit patent IN’724 is upheld.

(ii) However, the findings on the aspect of invalidity of the

suit patent vis-à-vis prior art are quashed and set aside. The

aspect of invalidity of the suit patent IN’724 vis-à-vis prior art is

remanded to the learned Commercial Court for consideration

afresh.

(iii) All aspects of facts and law shall remain open to be urged

by both sides before the learned Commercial Court on this

FAO (COMM) 235/2025 and another connected matter Page 18 of 20

aspect.

21. The sequitur would be that the impugned order, to the extent it

has rejected Mold Tek’s application under Order XXXIX Rules 1 and

2 and has upheld Neway’s application under Order XXXIX Rule 4

with respect to IN’724 would be set aside. This would result ipso facto

in revival of the ex parte ad interim order dated 8 January 2024 which

was in existence till the impugned order was passed.

22. We are not prepared to countenance Mr. Khera’s submission

that the ex parte ad interim order has merged in the final order and

that, therefore, it cannot revive. This is contrary to the basic principles

of merger. Once the ex parte ad interim order was in force till the

impugned order came to be passed whereby the application of the

respondent under Order XXXIX Rules 1 and 2 was dismissed and the

appellant’s application under Order XXXIX Rule 4 was allowed. The

inexorable sequitur of setting aside that order would be that the ex

parte ad interim order would be revived.

23. Mr. Khera has apparently conflated the aspects of merger and

eclipse.

24. The issue is too self-evident to brook detailed discussion. The

setting aside of the impugned judgement would obviously restore the

position as it stood prior to its rendition. That would, ipso facto, result

in revival of the earlier existing ex parte ad interim injunction.

25. Accordingly, we clarify that the ex parte ad interim order dated

FAO (COMM) 235/2025 and another connected matter Page 19 of 20

8 January 2024 would revive till the learned Commercial Court takes a

fresh call on the respondent’s application under Order XXXIX Rules 1

and 2 of the CPC.

26. However, in order to avoid prejudice to either side, we direct

the parties to appear before the learned Commercial Court on 17

February 2026. It would be for the learned Commercial Court to take a

decision afresh on the respondent’s application under Order XXXIX

Rules 1 and 2 of the CPC, seeking injunction for infringement of

IN’724.

27. We make it clear that the consideration of the learned

Commercial Court would be restricted to the challenge to the validity

of IN’724 as raised by Neway before the learned Commercial Court.

Needless to say, the ultimate decision of the learned Commercial

Court on Mold-Tek’s application would abide by the outcome of the

said decision.

28. Let the parties appear before the learned Commercial Court on

17 February 2026. Learned Counsel for both sides undertake not to

take any adjournment from the learned Commercial Court on the said

date.

29. In order to facilitate hearing, we also direct learned Counsel to

place a four page note of their submissions at least 48 hours in

advance of the hearing before the learned Commercial Court so that

the decision would be expedited. We request the learned Commercial

Court to take up the matter on the said date and hear arguments on

FAO (COMM) 235/2025 and another connected matter Page 20 of 20

Mold Tek’s application under Order XXXIX Rules 1 and 2 and

Neway’s application under Order XXXIX Rule 4 of the CPC on the

aspect of invalidity of IN’724 and to pass orders thereon either on the

same day or as expeditiously as possible.

30. Both these appeals are disposed of in the aforesaid terms with

no orders as to costs.

C. HARI SHANKAR, J.

OM PRAKASH SHUKLA, J.

JANUARY 28, 2026

AR/AT