Expiry Of Patent Term Renders Injunction Futile: Delhi High Court Dismisses Toyota's Application Against LMW Limited

Expiry Of Patent Term Renders Injunction Futile: Delhi High Court Dismisses Toyota's Application Against LMW Limited

Introduction

The Delhi High Court has dismissed an application filed by Toyota seeking an interim injunction against LMW Limited for allegedly infringing its patented products. The court held that since the patent in question had already expired, it could not pass any effective order restraining infringement.

Factual Background

Toyota alleged that LMW Limited was using its patented technology without authorization in its spinning machine known as Spinpact. The patent in question was granted in IN759 and IN883. Toyota contended that LMW Limited's actions constituted infringement of its patent rights. However, LMW Limited filed a counter-claim seeking declaration of both patents as invalid and revocation of the same under Sections 64 and 107 of the Patents Act, 1970.

Procedural Background

Toyota filed an application seeking interim injunction against LMW Limited for infringement of its patented products. The application was filed under Order 39, Rules 1 and 2 of the Code of Civil Procedure, 1908. LMW Limited opposed the application and filed a counter-claim seeking revocation of the patents. The court considered the application and the counter-claim and delivered its judgment.

Issues

1. Expiry of Patent Term: Whether the court can grant an interim injunction restraining infringement of a patent that has already expired.

2. Patent Validity: Whether the patent holder can claim protection after the expiry of the patent term.

3. Infringement: Whether LMW Limited's actions constituted infringement of Toyota's patent rights.

Contentions of Parties

Toyota's Contentions: Toyota contended that LMW Limited was infringing its patented technology without authorization. Toyota argued that it had a prima facie case and that the balance of convenience was in its favor.

LMW Limited's Contentions: LMW Limited contended that the patents were invalid and lacked novelty and inventive steps. They also sought revocation of the patents under Sections 64 and 107 of the Patents Act, 1970.

Reasoning & Analysis

The bench of Justice Saurabh Banerjee observed that the patent had already expired on May 24, 2025, and therefore, it could not pass any effective order restraining infringement. The court referred to Section 53 of the Patents Act, 1970, which provides that a patent shall cease to have effect after the expiry of the term of twenty years. The court held that granting an injunction would be futile and would lead to anomalies.

The court also observed that the patent holder cannot claim protection after the expiry of the patent term. The court noted that the patent is now freely available in the public domain, and anyone can use, manufacture, or sell it. The court emphasized that the court's power to grant injunctions is limited by the statute, and it cannot grant relief that is not statutorily available.

Final Outcome

The court dismissed Toyota's application for interim injunction and held that no effective order restraining infringement can be passed since the patent has already expired. The court disposed of the application and allowed the parties to proceed with the main suit.

Implications

The decision depicts the importance of patent terms and the consequences of expiry. It also emphasizes that the court's power to grant injunctions is limited by the statute, and it cannot grant relief that is not statutorily available. This decision will have implications for patent holders and alleged infringers, and it will guide the courts in deciding similar cases.

In this case the plaintiff was represented by Mr. C.M. Lall, Sr. Adv. with Mr. Pravin Anand, Ms. Archana Shanker, Mr. Sagar Arora, Ms. Annanya Mehan and Mr. Ashutosh Upadhyaya, Advocates.

Meanwhile the defendant was represented by Mr. Gaurav Pachnanda, Sr. Adv. with Mr. Vineet Rohilla, Mr. Pankaj Soni, Mr. Debashish Banerjee, Mr. Ankush Verma, Mr. Rohit Rangi and Ms. Namrata Sinha, Advocates.