Can Indian courts appoint commissioners to collect evidence to support patent infringement?
Ranjan Narula and Suvarna Pandey of RNA Technology and IP Attorneys explain how a High Court of Delhi decision affects the appointment of local commissioners to carry out scientific investigations in patent infringement claims
On November 1 2023, the High Court of Delhi passed judgment in a case that addressed the following points:
Where a plaintiff alleges patent infringement, and the defendant denies the allegation, there is a requirement for a scientific investigation and the appointment of a commissioner to collect evidence;
Whether the commission would amount to a fishing and roving enquiry and abuse of process;
Whether the appointment of a local commissioner to carry out such an investigation is necessary or expedient in the interests of justice; and
Whether, in the first instance, the onus is on the plaintiff to establish its infringement claim.
Facts and background
The plaintiffs (ITW GSE ApS & Anr.) alleged that certain series and models of the preconditioned air units (PCA units) manufactured by the defendants (Dabico Airport Solutions Pvt Ltd & Ors.) infringed their registered Indian Patent No. IN 330145 (the Suit Patent).
The plaintiffs claimed they mapped the features of the PCA units manufactured by the defendants with the claims in the Suit Patent, based on the defendants' brochures, the defendants' instruction manual, and a request for proposal issued by the defendants pursuant to a notice inviting tenders. However, such a claim needs to be verified by inspecting the product.
During the hearing, the plaintiffs raised that the matter requires investigation, relying on Order XXVI Rule 10A of the Code of Civil Procedure, 1908 (CPC), for adjudicating the issue of patent infringement. This provision can be broken down into the following ingredients.
One or more of the questions that arise in a suit before a court must involve scientific investigation;
It should not be possible to conduct that scientific investigation conveniently before the court; and
Issuance of the commission, in terms of the sub-rule, must be necessary or expedient in the interests of justice.
The plaintiffs also relied on Rule 5(i) of the High Court of Delhi Rules Governing Patent Suits, 2022 (the DHC Patent Rules), which provides that "at the first hearing, the patentee may seek an interim injunction as also appointment of a Local Commissioner for inspection, etc.. If appointment of a Local Commissioner is being prayed for, the specific premises where the product is being manufactured or the process is being implemented, be ascertained and mentioned in the application."
The defendants, on the other hand, submitted that a visit by a commissioner to gather evidence as sought by the plaintiffs would embarrass the defendants, as the PCA units in question are already installed at various locations. Therefore, if a local commissioner were to be permitted, under orders of the court, to undertake the exercise that the plaintiffs sought, it would cause needless embarrassment to the defendants, especially as the defendants are leading bidders in government contracts for the installation of such PCA units.
Analysis by the court
The defendants’ argument
The court noted that the aspect of embarrassment to the defendant(s) is tangential to the issue at hand. If a plaintiff is entitled to a grant of the prayers in an application, the court would not be swayed merely because such grant may embarrass the defendant(s). The court always has to keep the primordial interests of justice in mind.
The court agreed with the defendants that once the plaintiffs claimed to have adduced sufficient evidence to establish infringement of the Suit Patent by the defendants' PCA units, and the documents and material on which the mapping was performed was not denied by the defendants, there was no justification for granting the prayers in this application.
The court opined that Order XXVI Rule 10A of the CPC cannot be pressed into service by a party that asserts that it is in possession of sufficient evidence to support its case and only seeks to marshal better evidence. The provision is intended to assist the court, not to assist either party.
The plaintiffs’ argument
The court held that the first requirement of Order XXVI Rule 10A is that the suit must give rise to a question for the determination of which scientific investigation is necessary, which it interpreted as "where any scientific investigation is involved for determination of any question arising in a suit". The court observed that an application under Order XXVI Rule 10A must clearly set out:
The question(s) arising from the issue in controversy in the suit;
How the determination of said question(s) requires scientific investigation;
Why the scientific investigation cannot be conveniently undertaken before the court; and
How the appointment of a local commissioner to carry out the investigation is necessary or expedient in the interests of justice.
Even where all these criteria are satisfied, the decision on whether to accede to the applicant's request is ultimately one of the discretions of the court.
The court observed that it was acutely aware that the report of a commissioner appointed would constitute ‘evidence’. The line between directing an investigation to aid in the determination of the questions arising in a case and acting, even unwittingly and in the absence of any ill intent of the applicant, as an agent to procure evidence to support the case that it seeks to set up is at times thin, and the court must be cautious not to overstep it. The court also mentioned that Order XXVI Rule 10A does not empower the court to issue a commission to equip the plaintiffs with ‘best evidence’.
The court observed that rules 5(i) and (iii) of the DHC Patent Rules had no applicability to the facts of this case. The rules deal with the right of a patentee that institutes an infringement suit to, at the first hearing of the suit, seek an interim injunction and the appointment of a local commissioner for, among other tasks, inspection, and permits technical experts to be present at the time of execution of the commission. These provisions do not, even distantly, envisage the appointment of a commissioner to prepare technical reports mapping claims of a suit patent to the features of allegedly infringing products of a defendant.
The plaintiffs argued that the use of "etc." in Rule 5(i), following "inspection", means a local commissioner could be appointed. The court observed that the abbreviation "etc." would have to take colour from the word "inspection". It could not, therefore, extend to the local commissioner mapping claims of the Suit Patent to the features of the defendants' PCA units, especially where the mapping was sought by the plaintiffs to equip them with ‘best evidence’ to support the case of patent infringement that they raised.
A court can appoint a local commissioner to secure evidence – as an example, the seizure or inventory of infringing goods, machines, and dies (tools for cutting or moulding metal) – or to obtain otherwise unavailable evidence. However, the local commissioner cannot be expected to compare, or facilitate the comparison of, the plaintiff's patent with the defendant's product, particularly under Order XXVI Rule 10A, unless the court takes the view that this is necessary, based on the evidence submitted by the plaintiff.