Calcutta High Court restrains Finorchem from making 4-ADPA, finding its process prima facie similar to NOCIL’s patented method

NOCIL held three Indian process patents relating to the manufacture of 4-ADPA.

It alleged that Finorchem proposed to manufacture the same product using processes infringing those patents and had relied on an Environmental Impact and Risk Assessment (EIRA) report substantially reproducing NOCIL’s report.

NOCIL also alleged that its former employee, defendant no. 2, who had worked on the 4-ADPA project and signed a non-disclosure agreement (NDA), had disclosed confidential information to Finorchem.

Finorchem disputed infringement and challenged the patents’ validity; defendant no. 2 denied access to or disclosure of confidential information.

NOCIL sought interim relief for patent infringement and breach of confidentiality.

1. Whether NOCIL had established a sufficient prima facie case of infringement, and whether Finorchem had raised a credible challenge to the validity of the suit patents that would preclude interim relief.

2. Whether the materials established a prima facie case that defendant no. 2 breached his confidentiality obligations and that Finorchem procured or misused NOCIL’s confidential information.

Sections 12 and 13(4) of the Patents Act, 1970 mean that grant of a patent does not, by itself, establish its validity; nevertheless, grant and prolonged commercial exploitation may receive weight at the interim stage.

Under Sections 64 and 107, a defendant may challenge validity in an infringement suit, but must raise a credible, prima facie sustainable challenge—not one that is fanciful or illusory—to resist interim protection.

Section 104A may shift the burden of proving the process used where its conditions are met; the Court considered the identity of the product and the respondent’s evidence in applying that provision.

Section 48(b) gives a process patentee the exclusive right to prevent unauthorised use of the patented process.

For infringement, the Court compared the essential inventive features—the “pith and marrow”—of the patent claims with the challenged process, disregarding merely trifling variations.

The Court also applied the principle that confidential information may remain protected even where some constituent elements are publicly available, and that an employee or former employee must not misuse an employer’s trade secrets or confidential information.

*Zee Telefilms Ltd. v. Sundial Communications Pvt. Ltd.*

*John Richard Brady v. Chemical Process Equipments P. Ltd.* and *Hi-Tech Systems & Services Ltd. v. Suprabhat Ray*

The Court gave weight to the patents’ examination, age, and commercial exploitation, while recognising that grant alone did not establish validity.

It found that Finorchem had not raised a credible validity challenge and that its changing descriptions of its process, proposed patent amendments, and the close correspondence between the parties’ EIRA reports supported NOCIL’s case.

Comparing the processes’ common steps and the uncontroverted expert evidence, the Court considered the alleged differences minor and the processes prima facie equivalent in their essential features.

As to confidentiality, the NDA expressly concerned the 4-ADPA project, and the available evidence of defendant no. 2’s project involvement, together with the circumstances of his engagement by Finorchem and the respondents’ conduct, supported a prima facie inference of breach and misuse.

The Court therefore found a strong prima facie case, a balance of convenience in NOCIL’s favour, and a risk of irreparable injury.

It granted interim relief in terms of prayers (a) and (b) of the Notice of Motion and disposed of GA-COM 1 of 2024.