A plaintiff is master of its suit — but not master of the rules. In Pawan Kumar Goel v. Dr. Dhan Singh & Anr. [CS(COMM) 672/2022], the Delhi High Court refused to let a patentee withdraw an infringement suit with liberty to sue again, and made the exit cost Rs. 50,000.
A process patent, and a convenient pivot
The suit alleged infringement of patent 369150, a process for extracting Alpha Yohimbine of greater than 90% purity from Rauwolfia canescens/tetraphylla. Midway, the plaintiff sought to withdraw — but with liberty to refile under Order XXIII Rule 1(3)(b) CPC — on the basis that the defendants’ documents showed they used Rauwolfia vomitoria, which (said the plaintiff) did not infringe, while reserving the right to sue if they later switched to R. tetraphylla. The defendants did not object to a plain withdrawal but resisted the conditional one, arguing the suit lacked a cause of action: the patent was a process patent, not a monopoly over raw materials; the plaintiff’s own expert had found the defendants’ process different; and the litigation had been pursued despite that knowledge.
You cannot achieve indirectly what you cannot justify directly
The Court held the plaintiff’s justification conceptually flawed: a process patent protects the process, not a particular plant species, so the canescens-versus-vomitoria distinction could not ground either infringement or a reservation of future rights. The defendants had, in any event, produced documents showing use of R. tetraphylla, undermining the stated basis for withdrawal, and the plaintiff could not approbate and reprobate by litigation convenience. With the plaintiff’s own expert pointing to a dissimilar process, the Court refused permission to withdraw with liberty under Order XXIII Rule 1(3)(b), holding that what could not be justified directly could not be secured indirectly through an affidavit-based withdrawal — and imposed Rs. 50,000 in costs for dragging the defendants through avoidable litigation.
Why it matters
The decision is a tidy reminder about two things. First, claim scope: a process-patent plaintiff must plead infringement of the process, and cannot leverage the raw material or end-product to manufacture a cause of action — a recurring confusion in chemistry and pharma suits. Second, litigation hygiene: “withdrawal with liberty” is not a costless escape hatch when the suit was unsustainable to begin with; courts increasingly treat a strategic exit as an occasion for costs, not a clean slate. Read with this blog’s note on costs and delay in Jain Irrigation, the message to commercial litigants is consistent: the court’s indulgence has a price.
Sources & further reading: Order XXIII Rule 1, CPC.
Educational note: This case summary is general information, not legal advice.