Attempt to withdraw the suit with liberty without disclosing sufficient reason

Introduction

The Delhi High Court has sent a clear message to litigants in intellectual property matters: you cannot withdraw a patent infringement suit in a way that keeps the door open for filing the same case again just in case the defendant changes its process in the future. In this ruling, the court refused the plaintiff’s request for conditional withdrawal and instead imposed costs on him for dragging the defendant into avoidable litigation. The judgment carefully balances the plaintiff’s right to withdraw his own suit with the need to prevent abuse of court process and harassment of the opposite party.

Factual Background

Pawan Kumar Goel owns an Indian patent for a process to extract Alpha Yohimbine of high purity from a particular species of the Rauwolfia plant. He believed that Dr. Dhan Singh and his company were using the same plant and the same process, and therefore filed a commercial suit seeking permanent injunction, damages, accounts and delivery up of infringing material.

Later, after seeing the defendant’s export documents and manufacturing records, the plaintiff formed the view that the defendant was actually using a different species of Rauwolfia. On that basis he concluded there was no infringement and decided to withdraw the suit.

Procedural Background

The plaintiff filed an affidavit stating that the defendant’s product came from a different plant species and therefore did not infringe his patent. He requested the court to allow withdrawal of the suit with liberty to file a fresh suit in future if the defendant ever started using the specific plant covered by his patent.

The defendant strongly opposed this conditional withdrawal. They placed on record their batch manufacturing records and licence documents to show they had been using the plant species mentioned in the patent for many years. They also pointed out that the plaintiff’s own expert had clearly stated that the defendant’s process was completely different from the patented process.

• Batch manufacturing records were produced.
• Licence documents were placed on record.
• The plaintiff’s expert confirmed that the processes were dissimilar.

The defendant argued that the entire suit was without any real cause of action and asked for exemplary costs.

Reasoning And Decision Of Court

Justice Tushar Rao Gedela carefully examined the patent claims and found that the patent protects a process of extraction, not the plant species itself. The court observed that the plaintiff could not claim infringement only when one plant is used and say there is no infringement when another plant is used, because the patent is on the process, not on the raw material.

The judge noted that the defendant had produced clear evidence showing use of the relevant plant species for years, yet the plaintiff’s own expert had already confirmed that the processes were dissimilar.

The court held that the plaintiff was trying to approbate and reprobate at the same time. He could not say there is no cause of action today and at the same time keep the right to file the same case tomorrow if the defendant does something different.

Such a conditional withdrawal with liberty to file a fresh suit on the same cause of action was not justified under Order XXIII Rule 1(3)(b) of the Code of Civil Procedure. The court found no sufficient grounds for granting such liberty.

Costs And Directions

As a result, permission to withdraw with liberty was refused. The court imposed costs of Rs. 50,000 on the plaintiff for putting the defendant through unnecessary litigation when his own expert report had already shown the processes were different. The suit was directed to be listed again for further proceedings.

Point Of Law Settled In The Case

This judgment settles that a plaintiff in a patent infringement suit cannot seek withdrawal with liberty to file a fresh suit merely to keep a hypothetical future cause of action alive when the present suit itself lacks merit or when the plaintiff’s own evidence contradicts the infringement claim.

• The provision for withdrawal with liberty under Order XXIII Rule 1(3)(b) CPC is not meant to allow a party to reserve the right to re-litigate the same dispute on a “wait and watch” basis.
• A party who files a suit must stand by its pleadings and cannot blow hot and cold.
• Courts will impose costs where a litigant drags the other side into court on a weak or inconsistent case.

Case Details

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi