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Article: Can Withholding Evidence Lead to Presumption of Facts against Defendants in IP Infringement Cases?
Author: Pranay Bali
Introduction
As per Section 114 of the Indian Evidence Act, 1872, “The Court may presume the existence of any fact which it thinks likely to have happened…”. As per this provision, the courts may only draw a presumption having regard to the common course of natural events, human conduct and business in the context of the facts of a particular case. To what extent can withholding or lack of evidence lead a court to presume certain facts against Defendants in suits for infringement of intellectual property rights?
Failure to submit material crucial for a decision on infringement
A guiding judgment with respect to presumptions against Defendants in patent infringement matters is Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning a Corporation and Ors. v Unichem laboratories and Ors. [AIR 1969 Bom 255]. The Bombay High Court had to determine whether the process used by the Defendants to produce their drug was infringing the Plaintiff’s patent. The court observed that the Defendants had admitted that their drug was the same as the Plaintiff’s patented drug, and that the Defendants had not led any evidence to show by what precise process their drug is being prepared. The Court placed reliance on the principle that in a patent infringement suit, where the invention relates to the production of a new substance, any substance of the same chemical composition and constitution shall, in the absence of proof to the contrary, be deemed to have been produced by the patented process which it is alleged to be an infringement. Since the Defendants had failed to submit any evidence to show that the process used by them to prepare their drug was different to the Plaintiff’s process, the Court drew a presumption under Section 114 of the Evidence Act, that the Defendants’ process was infringing in nature.
In the recent copyright infringement matter of M/s. Super Cassettes Industries Private Limited v. Nandi Chinni Kumar [Civil Miscellaneous Appeal Nos. 355-358 of 2020, Telangana High Court], the court drew an adverse inference against the Defendants under Section 114 of the Evidence Act owing to the Defendants’ failure to produce certain evidence. Despite notices being served on them by the Plaintiff, the Defendants had failed to submit the relevant agreement, the script of their allegedly infringing film or a DVD of the same. Accordingly, the court drew a prima facie presumption that the Defendants’ work was infringing in nature and that even if the Defendants had submitted the relevant evidence, it would not have supported their case.
Silence or deflection of issues
In the recent case of Communication Components Antenna Inc. v. Ace Technologies Corp. [2019 (79) PTC 270 (Del)], the Plaintiff had sought a permanent injunction against the Defendant to restrain infringement of its patent for a novel antenna having an asymmetrical beam pattern. During the course of proceedings, the Defendants were asked if their antenna could be made available for inspection by a scientific expert appointed by the Court. The Defendants did not elicit any positive response to this. A perusal of the claims, complete specification and the beam patterns, read with the expert reports placed on record was showing infringement. It was held that – “In a patent infringement action, once the Plaintiff, prima facie establishes infringement, the onus shifts on the Defendants, to disprove the same. The complete silence by the Defendants shows that there is, in fact, withholding of relevant and crucial information from the court… The Defendants’ expert has not dealt with the issues raised head on in respect of the beam patterns, but has sought to deflect the issue. Thus, at this stage the Court has no option but to draw an adverse inference against the Defendants, as the Defendants have withheld and not disclosed the most crucial aspect of this case i.e., the beam patterns of their antennae.” Accordingly, the made a prima facie ruling of infringement by the Defendants.
Conclusion
From the above, it is evident that if a Defendant withholds information and evidence which would be crucial for a determination of infringement, the court is likely to make a presumption of infringement against it. However, such a presumption can only be made if the Plaintiff has discharged its initial burden of establishing, at least on a prima facie basis, its exclusive rights in the relevant intellectual property and that the Defendant has infringed the same. Thereafter, if a Defendant withholds any important information or fails to submit the relevant evidence even after being given the opportunity to do so, the court is entitled to draw an adverse inference against it.
References –
1. Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning a Corporation and Ors. v Unichem laboratories and Ors., AIR 1969 Bom 255
2. Communication Components Antenna Inc. v. Ace Technologies Corp., 2019 (79) PTC 270 (Del)
3. M/s. Super Cassettes Industries Private Limited v. Nandi Chinni Kumar, Civil Miscellaneous Appeal Nos. 355-358 of 2020, Telangana High Court
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