Nocil Ltd. v. Finorchem Ltd. and Anr.

High Court at Calcutta, Intellectual Property Rights Division, Original Side (Single Judge) | Date of Decision: 7 October, 2026 Case Number: IA No. GA-COM/1/2024 in IP-COM/25/2024 Bench: Hon’ble Justice Ravi Krishan Kapur

BACKGROUND

The petitioner, Nocil Ltd., one of the largest manufacturers of rubber chemicals in India, filed the underlying suit for patent infringement and breach of confidentiality against respondent no. 1, Finorchem Ltd. and respondent no. 2, a former employee of the petitioner. The petitioner holds three Indian process patents relating to the manufacture of 4-Aminodiphenylamine (“4-ADPA”), a chemical intermediate used as an antioxidant for rubber and polymer applications and as an intermediate in the manufacture of other antioxidants: (i) Indian Patent No. 341922 (“AN IMPROVED PROCESS FOR MANUFACTURE OF 4-AMINO DIPHENYLAMINE & ITS N-ALKYLATED PRODUCTS,” Application No. 2573/MUM/2012 filed 5 September 2012, granted 17 July 2020); (ii) Indian Patent No. 366559 (“AN EFFICIENT CONTINUOUS PROCESS FOR MANUFACTURE OF 4-AMINODIPHENYLAMINE FROM ANILINE NITROBENZENE,” filed via PCT application PCT/IB2012/051829 on 13 April 2012, nationalized as Indian application No. 1594/KOLNP/2014 on 29 July 2014); and (iii) Indian Patent No. 389262 (“IMPROVED PROCESS FOR PREPARING 4-AMINODIPHENYLAMINE,” filed via PCT application PCT/IB2012/051059 on 7 March 2012, nationalized as Indian application No. 1593/KOLNP/2014 on 29 July 2014). The petitioner also holds equivalent US patents (No. 9708243B, equivalent to Suit Patent 389262 and No. 9102585, equivalent to Suit Patent 366559).

Respondent no. 2, a Bachelor of Science graduate, joined the petitioner in 1987 as a “Production Supervisor” and, after several promotions, retired on 30 September 2020 as DGM-Process Technology, having at one point headed operations at the petitioner’s Dahej plant and played a key role in developing the petitioner’s proprietary 4-ADPA manufacturing processes, giving him access to confidential information and trade secrets. Respondent no. 2 had executed a Non-Disclosure Agreement (“NDA”) with the petitioner dated 11 May 2012, specifically referencing 4-ADPA and recording his membership of a project team working on “unique steps and methods to be tried at the laboratory and a pilot plant before commercialization,” with an obligation of confidentiality attaching to all such project information.

The petitioner’s grievance arose upon discovering an Environmental Impact and Risk Assessment (“EIRA”) Report filed by respondent no. 1 in relation to a plant where it proposed to manufacture 4-ADPA; inquiries revealed that, after leaving the petitioner’s employment, respondent no. 2 had been engaged by respondent no. 1 in connection with the manufacture of 4-ADPA. Correspondence ensued between the parties prior to suit; upon receiving the petitioner’s notices, the respondents filed caveats before different courts. On 19 April 2024, respondent no. 1 applied for its own process patent for 4-ADPA. By an order dated 26 November 2025, respondent no. 1 was directed to provide proof of the process used by it to manufacture 4-ADPA and on 6 February 2026 respondent no. 1 applied to amend its patent application. The present interim application (GA-COM/1/2024) sought reliefs restraining infringement of the petitioner’s process patents and restraining the respondents from misappropriating or misusing the petitioner’s confidential information and trade secrets.

ISSUES FOR DETERMINATION

Whether the petitioner made out a prima facie case of patent infringement against respondent no. 1 in respect of its three suit patents relating to the manufacture of 4-ADPA, applying the burden-shifting framework under Section 104A of the Patents Act, 1970.
Whether respondent no. 1 had raised a credible challenge to the validity of the suit patents sufficient to defeat the petitioner’s claim to interim relief, having regard to Sections 64 and 107 of the Patents Act, 1970.
Whether respondent no. 1’s conduct including its initial non-disclosure of its manufacturing process, the multiple inconsistent versions of its process subsequently disclosed and its proposed amendments to its own patent application was relevant to the balance of convenience at the interim stage, including whether respondent no. 1 had taken appropriate steps to “clear the way” before commencing its activities.
Whether the petitioner made out a prima facie case of breach of confidentiality and misappropriation of trade secrets against respondent no. 2 (in connivance with respondent no. 1), having regard to the Non-Disclosure Agreement dated 11 May 2012.
Whether the claims of patent infringement and breach of confidentiality were mutually inconsistent or destructive of one another, as contended by the respondents.
Whether the balance of convenience and risk of irreparable injury favoured the grant of interim injunctive relief in favour of the petitioner.

KEY HOLDINGS OF THE COURT

On the legal framework, the Court held that registration of a patent does not raise a presumption of validity unlike Section 31 of the Trade Marks Act, 1999, there is no equivalent provision in the Patents Act, 1970, a position the Court held was borne out by a conjoint reading of Sections 12 and 13(4) of the Act and supported by Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries and Hindustan Lever Limited v. Godrej Soaps Limited. Nonetheless, the Court held that, at the prima facie stage, the grant of a patent after a rigorous examination process “deserves recognition” and should not be outrightly disregarded; and under Section 107 of the Act, a defendant may raise every ground on which a patent is vulnerable to revocation under Section 64 as a defence, but at the interim stage is not required to make out a full case for revocation it is sufficient to raise a “credible challenge,” meaning one that is not fanciful, illusory or “moonshine,” but is prima facie acceptable and has some basis, not a mere shot in the dark (relying on Mold Tek Packaging Ltd v. Pronton Plast Pack Pvt Ltd and 3M Innovative Properties Ltd & Anr v. Venus Safety & Health Pvt Ltd).
The Court held that the suit patents were old, established, working patents, granted after extensive examination in India and other jurisdictions, commercially exploited without interruption for years and that while there was no presumption of validity due weightage had to be given to their grant, with undisputed enjoyment and exclusive use over more than a decade weighing in the petitioner’s favour at this stage (citing Kerr on Injunctions and Pratibha M. Singh on Patent Law).
On similarity of process, the Court held that there was a “striking similarity” between the EIRA Reports filed by the petitioner and respondent no. 1 finding respondent no. 1’s explanation (that the report had been prepared by the same agency) unpersuasive and holding that, absent an identical underlying process, there was no reason for such near-verbatim reproduction, particularly given that the petitioner’s report predated respondent no. 1’s.
On the “clear the way” principle, the Court held that a prospective market entrant who seeks to launch a process potentially covered by an existing patent must take steps to clear obstacles before commencing activities, rather than waiting to be sued whether by filing a pre-grant opposition under Section 25(1), a post-grant opposition under Section 25(2), a suit for declaration of non-infringement under Section 105, a suit for restoration under Section 106 or a revocation application under Section 64 and that respondent no. 1’s failure to avail any such remedy prior to the suit was a factor weighing against it at the interim stage (relying on Smith Kline Beecham v Generics UK LTD, AstraZeneca AB v Glenmark Pharmaceuticals Europe Ltd and Eisai Co Ltd v Satish Reddy).
On respondent no. 1’s conduct, the Court held that its initial failure to disclose its process and the inconsistent positions taken during the hearing, were crucial factors. The Court identified at least three different versions of the process disclosed by respondent no. 1: (a) the version in its EIRA Report, substantially identical to the petitioner’s process save for an asserted (and found to be false) distinction regarding catalyst use (TeOH/TEMOH), it having emerged that respondent no. 1 in fact proposed using the same catalyst as the petitioner; (b) the process in its patent application dated 19 April 2024, subsequently abandoned; and (c) a further process disclosed by affidavit, virtually identical to the petitioner’s patented process with trifling differences, which has also since been abandoned in favour of proposed amendments to the patent application amendments the Court characterized as a “drastic” and calculated attempt to disguise the real process used, citing as an example the deletion of a specific molar ratio range (6:1 to 10:1, aniline to nitrobenzene) in favour of a vague “predetermined ratio,” and the proposal to render an inventive feature of the suit patents (a second hydrogenation step) merely “optional.”
On the merits of infringement comparison, the Court identified twelve common process steps shared between the suit patents and respondent no. 1’s disclosed process (set out in the judgment, spanning the reaction of aniline with TMAH through to conversion of 4-ADPA to 6-PPD), with identical end products in both processes, against which respondent no. 1 had raised only minor distinctions (relating to anilide terminology, specific reactor variety names and the “optional” characterization of the second hydrogenation step) which the Court held were addressed and rebutted by the petitioner’s uncontroverted expert evidence. The Court held that the governing test for infringement is comparison of the claims of the patent with the process actually employed by the alleged infringer, focusing on the “pith and marrow” the essential inventive features rather than a meticulous dissection of specifications, with unessential features or trifling variations to be ignored (relying on Sotefin SA v. Indraprasstha Cancer Society, SNPC Machines Private Ltd. and Ors. v. Vishal Choudhary and Raj Parkash v. Mangat Ram Chowdhry) and that the burden to establish that the suit patents were most likely to be revoked lay on respondent no. 1.
On the prior art challenge, the Court held that the alleged prior arts cited by respondent no. 1 had all been explained by the petitioner, that challenges to the equivalent US patents had been dismissed and that the European patents had similarly been explained and all cited prior art overcome in proceedings in both India and the USA; the Court further held that respondent no. 1’s reliance on a “mosaic” of different prior art citations to assert that the patented process was known was impermissible (relying on J. Mitra And Co. Pvt. Ltd. v. Kesar Medicaments And Anr.) and accordingly held that the petitioner’s process was not shown to be anticipated by any cited prior art.
The Court distinguished Natural Remedies Pvt. Ltd. v. Indian Herbs Research and Supply Company Ltd and Ors. (decided after full trial, on facts where end products were not identical, such that no Section 104A burden arose) and Hindusthan Lever Limited v. Godrej Soaps Limited (where the patent had never been commercially worked, the validity challenge predated the suit and there existed rival expert opinions) as factually inapposite to the present case.
On the conduct of the respondents generally, the Court held that it had been “clandestine” and that the respondents had not approached the Court with clean hands, pointing to evasive pre-suit replies, a belated invalidity challenge, failure to contemporaneously disclose the relationship between respondent nos. 1 and 2, the filing of a competing patent application some 15 months after the suit was filed and repeated changes to the disclosed process all held to be factors prima facie demonstrating dishonest conduct.
On breach of confidentiality, the Court held that the NDA executed by respondent no. 2 clearly imposed an obligation of confidence specifically in relation to 4-ADPA processes and that this could not be read as a mere general agreement; that respondent no. 2’s contention that he held only an administrative, non-technical role was contradicted by the NDA itself and by his own qualifications and signed appraisal/assessment reports relating to plant operations involving 4-ADPA; that no affidavit had been affirmed personally by respondent no. 2 (all affidavits for the respondents having been filed by a Senior Manager of respondent no. 1 without apparent personal knowledge of respondent no. 2’s employment) and that respondent no. 2’s evasive conduct regarding the circumstances of his engagement by respondent no. 1 was a further adverse factor. The Court held that the cumulative conduct and sequence of events prima facie indicated that respondent no. 1 intended to procure breach of the NDA and that the petitioner’s apprehensions were well-founded, giving rise to an imminent danger not compensable in money (relying on John Richard Brady & Ors. v. Chemical Process Equipments P. Ltd. & Anr. and Hi-Tech Systems & Services Ltd. v. Suprabhat Ray & Ors.).
On the respondents’ contention that the infringement and confidentiality claims were mutually destructive, the Court rejected this, holding that a patentee is not obliged to disclose all information material to the patent the Act requires only that the complete specification describe the best method of performing the invention known to the applicant as of the relevant date (referencing Article 29 of the TRIPS Agreement and Section 10 of the Manual of Patent Office Practice and Procedure) and that information can retain the quality of confidence even where some of its constituent elements are independently available in the public domain (relying on Zee Telefilms Ltd. and Anr. v. Sundial Communications Pvt. Ltd.).
Final holding and operative order: The Court held that the petitioner had made out a strong prima facie case for interim relief; that respondent no. 1 had failed to raise a credible challenge to the validity of the suit patents (the mere filing of a counterclaim being insufficient to defeat protective relief); that respondent no. 1’s disclosed process was equivalent and substantially similar to the patented processes, with only minor and inconsequential differences; that the role of respondent no. 2 in accessing and sharing the petitioner’s confidential information was borne out by the record; and that the conduct of both respondents non-disclosure, suppression of material facts, inconsistent positions and incomplete disclosure weighed further in the petitioner’s favour on the balance of convenience, with irreparable injury likely absent interim protection and noting that respondent no. 1 had not yet commenced commercial production. The Court accordingly ordered that there “shall be an order in terms of prayers (a) and (b) of the Notice of Motion” [the specific text of prayers (a) and (b) is not reproduced in the portion of the judgment available; see Note below] and GA-COM 1 of 2024 was disposed of accordingly.

STATUTORY PROVISIONS INVOLVED

Section 104A of the Patents Act, 1970, governing the burden of proof in infringement suits involving process patents, was central to the Court’s analysis: once the petitioner established that the end products of the two processes (4-ADPA) were identical, the burden shifted to respondent no. 1 to prove that the process it used differed from the patented process a burden the Court held respondent no. 1 had failed to discharge.

Sections 12 and 13(4) of the Patents Act, 1970, concerning the examination process for patent applications, were read conjointly by the Court to support the conclusion that grant of a patent does not raise a presumption of validity (in contrast to Section 31 of the Trade Marks Act, 1999, which the Court noted does create such a presumption for registered trade marks).

Section 64 of the Patents Act, 1970, setting out the grounds on which a patent is liable to revocation and Section 107, entitling a defendant in an infringement suit to raise any such ground as a defence (including by way of counterclaim), were applied by the Court in articulating the “credible challenge” standard applicable to a defendant’s validity challenge at the interim stage, distinct from the higher threshold required to actually establish revocation at trial.

Sections 25(1) and 25(2) of the Patents Act, 1970 (pre-grant and post-grant opposition), Section 105 (suit for declaration of non-infringement) and Section 106 (suit for restoration/relief against groundless threats or a related restoration provision), were referenced collectively as the statutory remedies available to a prospective market entrant seeking to “clear the way” before launching a potentially infringing process, none of which respondent no. 1 had availed of prior to the present suit.

Section 48(b) of the Patents Act, 1970, conferring on the patentee of a process the exclusive right to prevent third parties from using that process, was cited as the substantive statutory right underlying the petitioner’s claim, with the Court noting that the ultimate question of infringement would be finally determined only after assessment of expert evidence at trial.

Article 29 of the TRIPS Agreement and Section 10 of the Manual of Patent Office, Practice and Procedure, concerning the disclosure obligations of a patent applicant (requiring description of the best method of performing the invention known to the applicant as of the relevant date, not disclosure of all material information), were applied by the Court to reject the respondents’ contention that the infringement and confidentiality claims were inconsistent.

REASONING OF THE COURT

The Court’s reasoning proceeded in a structured manner consistent with the established framework for interim relief in process-patent infringement cases. It first established the correct legal starting point that patent grant does not carry a presumption of validity under Indian law, unlike trade mark registration before immediately qualifying this with the practical observation that, at the interim stage, sustained, unchallenged commercial working of old and thoroughly examined patents for over a decade is itself a weighty factor favouring the patentee, since a defendant seeking to disturb this settled position bears the burden of raising a genuinely credible (not merely formal) validity challenge.

The Court’s central factual reasoning turned on the chronology and substance of respondent no. 1’s shifting disclosures: by tracing, in sequence, the EIRA Report’s initial (and found to be false) claimed point of distinction, the subsequent abandonment of the original patent application’s disclosed process, the further abandonment of the process disclosed by affidavit and the final resort to a drastically amended patent application that replaced specific, falsifiable technical parameters (a defined molar ratio range) with vague language and recharacterized an inventive step as merely optional, the Court built a cumulative picture of a party progressively retreating from disclosures that too closely resembled the petitioner’s patented process toward increasingly vague formulations reasoning that this pattern itself was probative of an intent to disguise, rather than genuinely differentiate, the actual process being used. This evidentiary technique using the respondent’s own successive, inconsistent positions as circumstantial evidence against it ran through the judgment’s broader assessment of clean hands and good faith as well.

On the substantive infringement comparison, the Court applied the “pith and marrow” doctrine, reasoning that the proper comparison is at the level of essential inventive features rather than granular specification details and that minor terminological substitutions (reactor variety names, “anilide” versus “reactive anilide”/”anilide-rich mixture”) or strategic recharacterizations (rendering an inventive step “optional”) do not constitute genuine process differences capable of avoiding infringement where the overall process, inputs and end product remain substantially the same reasoning reinforced by the petitioner’s expert evidence, which the Court noted went uncontroverted by any competing expert evidence from the respondents.

On the “clear the way” principle, the Court’s reasoning was explicitly grounded in “commercial common sense”: a party aware of an obstacle (an existing patent potentially covering its intended activity) should proactively address that obstacle through the statutory mechanisms designed for that purpose, rather than proceeding regardless and relying on litigation defences only once sued and the respondent’s complete failure to avail any of the several available pre-suit remedies was treated as both a missed opportunity and an adverse inference-supporting omission.

On confidentiality, the Court’s reasoning drew heavily on the specific, unambiguous language of the NDA (explicitly referencing 4-ADPA and team-based laboratory/pilot-plant development work) to reject respondent no. 2’s characterization of his own role as purely administrative, treating his professional qualifications and documented operational involvement (appraisal/assessment reports) as directly contradicting that characterization. The Court’s emphasis on the absence of any personally-affirmed affidavit from respondent no. 2 with all affidavits instead filed by a third party said to lack personal knowledge was treated as a significant evidentiary gap casting doubt on the respondents’ account of the circumstances of his engagement, reinforcing the broader finding of evasive and non-transparent conduct.

DOCTRINAL SIGNIFICANCE

Within the bounds of what was actually decided, this is a single-judge interim injunction order (not a final merits determination) arising from the Calcutta High Court’s Intellectual Property Rights Division, addressing both patent infringement and trade-secret/confidentiality claims arising from the same underlying facts. Its significance lies chiefly in its clear articulation and application, in a process-patent context, of several now well-established principles of Indian patent injunction practice: that patent grant, while not raising a legal presumption of validity, nonetheless carries meaningful evidentiary weight at the interim stage, particularly for long-established, examined and commercially worked patents; that a defendant resisting interim relief on invalidity grounds must raise a “credible” not merely formal challenge, with the burden of substantiating that challenge resting on the defendant; that the Section 104A burden-shifting mechanism for process patents operates once identity of end product is shown, requiring the defendant to affirmatively establish process difference; that the “clear the way” doctrine (drawn from English and other comparative authority) is a relevant equitable consideration in assessing balance of convenience in Indian process-patent disputes; and that a defendant’s shifting, inconsistent technical disclosures over the course of litigation can themselves constitute strong circumstantial evidence against a bona fide claim of a differing process. On the confidentiality dimension, the judgment reinforces that an NDA’s scope is to be read according to its actual terms rather than a party’s post hoc characterization of its own role and that information may remain protectable as confidential notwithstanding that some constituent elements are independently public. The judgment is explicitly interim and prima facie in character throughout; the Court repeatedly noted that final determination of infringement, validity and breach of confidentiality would depend on assessment of expert evidence at trial and the present order does not foreclose respondent no. 1’s pending counterclaim or any other substantive defence to be tested on full evidence.

Nocil Ltd. v. Finorchem Ltd. and Anr.

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