Independence of Section 106 Groundless‑Threat Suits and Consolidation of Overlapping Patent Litigation in the Earlier‑Filed Forum: Supreme Court’s Guidance under Section 25 CPC

Case: Atomberg Technologies Private Limited v. Eureka Forbes Limited & Anr.

Citation: 2025 INSC 1253

Court: Supreme Court of India

Bench: Pamidighantam Sri Narasimha, J.; Atul S. Chandurkar, J.

Date: 17 October 2025

Introduction

This judgment addresses an increasingly common procedural flashpoint in patent litigation: the interplay between a “groundless threat” action under Section 106 of the Patents Act, 1970 and a patentee’s infringement action under Sections 104/108, when both arise from the same commercial dispute and are filed in different High Courts.

Atomberg Technologies Private Limited (petitioner in Transfer Petition (Civil) No. 1983 of 2025) launched a water purifier under the mark “Atomberg Intellon” on 20 June 2025. Eureka Forbes Limited (respondent no.1), a competing patentee in the water purifier space, allegedly issued oral threats of patent infringement to Atomberg’s distributors and retailers, deterring trade. Atomberg promptly filed a Bombay Suit on 1 July 2025 under Section 106 seeking relief against groundless threats. A week later, Eureka Forbes filed a Delhi Suit on 7 July 2025 alleging patent infringement (Sections 104, 108), invoking Delhi’s jurisdiction via an online purchase and delivery of Atomberg’s product in Delhi, and sought an injunction.

Competing transfer petitions followed: Atomberg sought transfer of the Delhi infringement suit to Bombay; Eureka Forbes sought transfer of the Bombay groundless‑threat suit to Delhi. The Supreme Court allowed Atomberg’s petition, transferring the Delhi suit to the Bombay High Court to be tried alongside the earlier‑filed groundless‑threat action, and dismissed Eureka Forbes’s cross‑petition.

The judgment clarifies two crucial points: first, a Section 106 groundless‑threat action is an independent cause of action (distinct from an infringement claim), a position buttressed by legislative change from the 1911 Act to the 1970 Act; and second, where the parties and issues substantially overlap, the Supreme Court may, under Section 25 CPC, consolidate the litigation in the forum of the earlier suit to avoid duplication and the risk of conflicting decisions.

Summary of the Judgment

Procedural posture: Two opposing transfer petitions under Section 25 of the Code of Civil Procedure, 1908 (CPC), seeking transfer of suits between the High Courts of Delhi and Bombay.
Key factual anchors:
- The groundless‑threat suit in Bombay was filed first (1 July 2025).
- The infringement suit in Delhi was filed later (7 July 2025), with jurisdiction invoked by a test purchase and delivery in Delhi.
- The parties and issues across both suits substantially overlap.
Holding: The Court transferred the Delhi infringement suit (CS (COMM) No. 663 of 2025) to the Bombay High Court to be tried with the earlier Bombay groundless‑threat suit (Commercial IP (L) No. 19837 of 2025). The cross‑transfer petition by Eureka Forbes was dismissed.
Reasoning highlights:
- Section 106 groundless‑threat suits are independent causes of action under the Patents Act, 1970, unlike under the 1911 regime where a diligently prosecuted infringement suit could negate such actions.
- Applying Chitivalasa Jute Mills v. Jaypee Rewa Cement (2004) 3 SCC 85, the Court emphasized the duplication of evidence and risk of inconsistent findings if the suits proceeded separately.
- Within the limited remit of Section 25 CPC, the Court did not opine on which suit is “wider” in scope but prioritized consolidation to preserve judicial economy and consistency.
- The Court directed expeditious disposal of interim injunction applications by the transferee court.

Factual Matrix and Timeline

20 June 2025: Atomberg launches “Atomberg Intellon” water purifiers.
Alleged conduct: Eureka Forbes allegedly issues oral threats to Atomberg’s distributors/retailers asserting patent infringement and threatened proceedings.
1 July 2025: Atomberg files Bombay suit under Section 106 Patents Act (Groundless Threat of Infringement).
7 July 2025: Eureka Forbes files Delhi infringement suit under Sections 104 and 108, invoking jurisdiction based on an online purchase delivered in Delhi; seeks injunction.
Transfer petitions:
- Atomberg seeks transfer of the Delhi suit to Bombay (TP(C) 1983/2025).
- Eureka Forbes seeks transfer of the Bombay suit to Delhi (TP(C) 2174/2025).

Issues Presented

Whether the Supreme Court should transfer the later‑filed infringement suit to the forum of the earlier‑filed groundless‑threat suit to avoid multiplicity and conflicting judgments, under Section 25 CPC.
Whether, and to what extent, a Section 106 groundless‑threat action is an independent cause of action vis‑à‑vis a patentee’s infringement claim.
How the Court’s consolidation approach interacts with jurisdiction invoked by online test purchases and deliveries in another forum.

Key Holdings and Orders

Independence of Section 106 action: The Court underscored that Section 106 Patents Act creates an independent cause of action, unlike the Indian Patents and Designs Act, 1911 (Section 36), whose proviso negating such suits upon diligent prosecution of an infringement action was not carried into the 1970 Act.
Overlap and consolidation: Given substantial overlap of facts, law, parties, and evidence, and the earlier institution of the Bombay action, the Delhi infringement suit is transferred to Bombay for a combined trial to avoid duplication and inconsistent decrees.
No ruling on comparative scope: Exercising restraint under Section 25 CPC, the Court declined to declare which suit was broader in scope.
Interim relief: The Bombay High Court was requested to take up and dispose of the interim injunction applications expeditiously.

Detailed Analysis

1. Precedents and Prior Law Cited

Chitivalasa Jute Mills v. Jaypee Rewa Cement, (2004) 3 SCC 85:
- The Supreme Court relied on Chitivalasa to emphasize consolidation where parties, issues, evidence, and time period substantially overlap. The risk of conflicting decisions, duplication of evidence, and waste of judicial resources warrants transfer.
- The test is pragmatic: if the suits are mirror images (with claims in one being defenses in the other) and turn on the same documentary and oral evidence, consolidation through transfer promotes consistency and economy.
Indian Patents and Designs Act, 1911, Section 36 (repealed for patents):
- Under the 1911 regime, a person could sue to restrain groundless threats, but the proviso carved out a defense for the patentee if an infringement action was commenced and prosecuted with due diligence, thereby neutralizing the threats action.
- The 1970 Act (Section 106) omits this proviso, a deliberate legislative choice that the Supreme Court highlights, signaling an independent and coequal remedial pathway for those aggrieved by unjustified threats.
Delhi High Court (23 January 2020, CS(COMM) 342/2019, excerpt noted):
- The Supreme Court noted the Delhi High Court’s exposition that Section 106 of the 1970 Act stands on an independent footing due to the removal of the 1911 proviso. The Supreme Court adopts this interpretive approach.

2. Statutory Architecture and the Court’s Legal Reasoning

a) Section 106 Patents Act: Independence Confirmed

The Court draws a clear doctrinal line between the repealed 1911 law and the 1970 Act. By noting that Parliament consciously omitted the 1911 proviso, the Court affirms that a Section 106 action is not extinguished or rendered non‑maintainable merely because the patentee initiates an infringement suit—even if such a suit is prosecuted diligently. This has two implications:

The “threatened” party need not await the patentee’s suit; it can proactively seek relief against threats that impair commerce.
Patentees cannot deploy a swift infringement action as a tactical shield to derail a threats suit; both remedies may co‑exist.

b) Section 25 CPC: Transfer Power Guided by Overlap and Ends of Justice

Section 25 CPC empowers the Supreme Court to transfer any civil proceeding from one High Court (or civil court) to another, where expedient for the ends of justice. The Court applied this power by focusing on:

Substantial overlap: The same commercial product, patents, parties, time frame, and communications underlie both suits. The evidence base and the core legal questions significantly intersect.
Risk of duplication and inconsistency: Parallel proceedings would entail duplicative evidence and pose a manifest risk of inconsistent findings and conflicting decrees—an outcome Chitivalasa discourages.
First‑in‑time factor: While not elevating chronology into a rigid rule, the Court treated the earlier‑filed Bombay suit as a material factor pointing to the natural forum for consolidation.
Judicial economy: Consolidation conserves judicial resources and streamlines interim relief consideration.

Crucially, the Court expressly refrained (para 8) from adjudicating which suit is “wider” in scope, recognizing the narrow remit of a Section 25 transfer inquiry and avoiding any merits determination.

c) Jurisdiction via Online Test Purchase: Not Decisive at Transfer Stage

The Court recorded (para 10(ii)) that Delhi jurisdiction was invoked by an online purchase and delivery in Delhi, a technique often used to establish a slice of cause of action. Without pronouncing on the sufficiency or propriety of that basis, the Court treated it as a neutral fact in the transfer analysis. The message is measured: e‑commerce fact patterns may confer territorial jurisdiction in an infringement suit, but where there is an earlier‑filed, overlapping suit in another forum, Section 25 CPC consolidation may nonetheless be appropriate.

d) Balancing Party Convenience and Forum Contacts

The petitioner highlighted that both parties maintain registered offices in Mumbai. Although the Court did not make “convenience” the fulcrum of its decision, the Mumbai nexus supports that the Bombay High Court is a coherent forum to hear both suits. The consolidation order also guards against perceived forum shopping without labelling the Delhi filing as such.

3. Impact and Implications

For patentees:
- Pre‑litigation communications alleging infringement carry real litigation risk: broad or aggressive “threats” (especially to distributors/retailers) can trigger a Section 106 suit in a forum you may not prefer.
- Filing an infringement suit promptly will not necessarily moot a Section 106 action; after this judgment, the independence of Section 106 is Supreme Court‑endorsed doctrine.
- Expect consolidation where issues overlap; plan for evidence and expert testimony to be marshalled in a single forum.
For alleged infringers/market participants:
- Section 106 is a robust tool to neutralize market‑distorting threats; you can sue without awaiting an infringement action.
- Filing first can influence forum selection through consolidation under Section 25 CPC when disputes overlap.
- Prepare for the transferee court to swiftly address interim injunctions; the Supreme Court’s directive emphasizes expedition.
On e‑commerce jurisdiction strategies:
- “Test purchase and delivery” can lay jurisdictional ground, but will not immunize a later‑filed suit from transfer if an earlier overlapping suit exists elsewhere.
- Litigants should calibrate jurisdictional strategies with an eye to potential consolidation in the earlier forum.
Judicial administration:
- The judgment reinforces a consolidation‑first ethos in multi‑forum IP disputes to avoid duplication and inconsistent outcomes.
- It harmonizes practice by aligning patent litigation management with general civil procedure principles articulated in Chitivalasa.

Complex Concepts Simplified

Groundless threat of infringement (Section 106, Patents Act, 1970):
- A civil action available to any person aggrieved by unjustified threats of patent infringement proceedings (including oral/written communications that reasonably convey a threat of legal action or liability).
- Reliefs include: declaration that threats are unjustifiable, injunction to restrain continuation of threats, and damages.
- Under the 1970 Act, this action stands independent of an infringement suit; a patentee’s subsequent (or even diligent) infringement suit does not extinguish or bar the Section 106 action.
Patent infringement suit (Sections 104 and 108, Patents Act, 1970):
- Filed by the patentee or exclusive licensee seeking reliefs such as injunction, damages, rendition of accounts, delivery‑up, etc.
- Section 104 governs forum competence (no suit below a District Court; High Courts with original jurisdiction under their charters may also try such suits); territorial jurisdiction follows CPC principles.
Section 25 CPC (Transfer by Supreme Court):
- Empowers the Supreme Court to transfer any suit/appeal/other proceeding from a High Court or civil court to another High Court or civil court of equal/superior jurisdiction “if expedient for the ends of justice.”
- Core considerations: convenience of parties/witnesses, avoidance of conflicting decisions, judicial economy, and the substantial overlap of issues and evidence.
Forum shopping:
- The practice of choosing a court thought to be more favorable. While the Court did not make a finding of forum shopping, consolidation reduces incentives and opportunities for tactical multi‑forum filings that risk inconsistent outcomes.
Jurisdiction via online test purchase:
- Placing an online order and delivery within a forum can establish part of the cause of action for territorial jurisdiction. This judgment leaves that question untouched at the merits level, noting it as a fact but prioritizing consolidation where appropriate.

Why This Judgment Matters

Clarifies statutory evolution: By spotlighting the deletion of the 1911 proviso, the Supreme Court cements the independent status of Section 106 actions, aligning Indian patent law with a modern, trader‑protective approach to unjustified threats.
Sets a consolidation template: In overlapping patent disputes bifurcated into threat and infringement suits, the Court articulates a practical route—transfer to and trial in the earlier forum—to avoid duplication and inconsistent rulings.
Signals to litigants about litigation conduct: Pre‑suit communications must be measured; rushed, reactive infringement filings may not shield against a threats action or dictate the forum.
Protects judicial resources: The decision furthers a policy of judicial economy and integrity of outcomes in complex IP cases, where evidence (including technical analysis) is often voluminous and specialized.

Conclusion

The Supreme Court’s ruling in Atomberg v. Eureka Forbes performs a valuable twofold function. First, it affirms that Section 106 groundless‑threat suits under the Patents Act, 1970 are truly independent, a result of Parliament’s deliberate departure from the 1911 Act’s negatory proviso. Second, it operationalizes Section 25 CPC to consolidate overlapping patent disputes in the earlier‑filed forum when parties, issues, and evidence substantially coincide—thereby averting duplicative trials and conflicting decrees.

While the Court did not—and properly so—pronounce on the relative breadth of the two suits or the sufficiency of Delhi’s jurisdiction invoked via an online purchase, it set out a principled path forward: consolidate first, try comprehensively, and decide interim relief expeditiously in the transferee court. For patentees and alleged infringers alike, the judgment recalibrates pre‑litigation strategy and forum selection, underscoring that the management of parallel IP proceedings will be guided by coherence, efficiency, and the ends of justice.

Key takeaway: Groundless‑threat suits are not subordinate to infringement suits under the 1970 Act. When such suits travel in tandem and substantially overlap, the Supreme Court will favor consolidation—often in the earlier‑filed forum—to safeguard judicial economy and consistency.