V.K. Industries v. HCL Ltd.

Facts

• V.K. Industries held a process patent for a method of manufacturing a specific product
• HCL Ltd. manufactured and sold an identical product
• V.K. Industries alleged that HCL was using its patented process
• HCL denied infringement and claimed to use a different manufacturing process
• V.K. Industries relied on Section 104A for reversal of burden of proof, arguing the product was new or that it was unable to determine the actual process used by the defendant through reasonable efforts

Issue

1. Whether the burden of proving that the defendant used a different process lies on the defendant under Section 104A of the Patents Act, 1970 in a process patent infringement suit?

Held

• Section 104A reverses the burden of proof in process patent infringement cases
• The reversal applies when:
• The product obtained by the patented process is new, or
• There is a substantial likelihood that the identical product was made by the patented process, and the plaintiff has been unable to determine the actual process used despite reasonable efforts
• Once these conditions are met, the defendant must prove that the process used is different from the patented process

Ratio Decidendi

Under Section 104A of the Patents Act, 1970, in infringement proceedings relating to a process patent, the court shall presume that the defendant's identical product was obtained by the patented process unless the defendant proves otherwise. This reversal of the normal burden of proof is triggered when the product is new or when there is a substantial likelihood of the patented process being used and the patent holder cannot determine the actual process through reasonable efforts. The provision reflects the inherent difficulty in proving process infringement, as the process is typically within the defendant's exclusive knowledge.