Dhaval Diyora vs. Union Of India And Ors
Decided on 5 November, 2020 by Bombay High Court
WRIT PETITION (L) NO.3718 OF 2020
In this case, the Bombay High Court dealt with the question of whether a pre-grant representation can be filed while the decision of the Controller of Patents to reject a patent application is on appeal before the IPAB. The Court held that pre-grant representation cannot be filed while the decision of the Controller is on appeal because the time limit to file the same comes to an end once the decision on a patent application is made by the Controller. While holding so, the Court pointed out that pre-grant representations are meant to assist the Controller and that they must be decided simultaneously with examination. The Court in the case pointed out that once a decision to grant or refuse is made, the act of sealing is merely a ministerial act and does not have any bearing on the timeline for filing pre-grant representations. It also came down heavily on benami opposers of patents and imposed a fine of 25 thousand rupees against the opponent in the case.
Interdigital Technology … vs Xiaomi Corporation & Ors.
Decided on 9 October, 2020 by Delhi High Court
I.A. 8772/2020 in CS(COMM) 295/2020
In this case involving Standard Essential Patents pertaining to 3G and 4G technologies, the Delhi High Court granted an ad interim injunction against the order of a Wuhan Court with respect to an Anti-Suit Injunction Application filed by Xiaomi. The Court held that the Wuhan Court’s order cannot interfere with the enforcement of patent rights pertaining to Indian patents, which can be done only before Indian Courts. In a case for setting royalty rates, the Wuhan Court had granted an Anti-Suit Injunction in favour of Xiaomi prohibiting Interdigital from proceeding with patent infringement suits pertaining to the SEPs that form part of the Wuhan case. While granting the ad interim injunction, the Court also stated that the Wuhan Court does not have the jurisdiction to proscribe infringement suits in India, and that the proceedings before the Courts are different from each other. It stated that Comity principles pertaining to foreign judgments must yield to municipal law, public policy and justice.
Astrazeneca Ab & Anr vs. Union Of India & Ors.
Decided on 23 July, 2020 by Delhi High Court
W.P.(C) 4431/2020 & CM APPL. No.15958/2020(stay)
In the case, Astra Zeneca filed a petition to quash a para from the order given by the Controller of Patents with respect to its patent relating to the compound DAPAGLIFLOZIN, which is used for treatment of diabetes. The relevant para 10 reads as follows:
“10.With respect to the contention of the representor wherein that there has been no publication of the grant of patent u/s 43(2) in Office Journal dated 31/07/2009, I submit that there appears to be an inadvertent error wherein the grant of the said patent was not published. I hereby order that this may be rectified immediately. The concerned division in the Patent Office to publish the grant of the patent u/s 43(2) within 15 days from the date of this order. And all rights and contention of any party pursuant to grant and notification of grant will be governed under the law.”
The Court stayed the operation of the para considering the fact that publishing the patent after 11 years, especially after the patent grant was updated on the patent office’s website may not be reasonable to Astra Zeneca unless the case and its nuances are reviewed comprehensively. It therefore posted the case for further hearing. Allowing the patent to be published would have opened the gates for post grant oppositions, which would have proved to be detrimental to the interests of Astra Zeneca.
Natco Pharma Ltd vs. Union Of India & Ors.
Decided on 1 July, 2020
W.P.(C) 3847/2020
In this case relating to a pharmaceutical patent, the Court set aside the objection pertaining to hearing of an appeal by IPAB revoking the patent based on the ground that the appropriate technical member was not appointed. It stated that the IPAB may proceed with the hearing based on the doctrine of necessity as held in the Mylan case. The Court cited relevant paras of the Mylan case as follows:
“9. I may first see the observations of the Co-ordinate Bench of this court in Mylan Laboratories Ltd. v. Union of India(supra). Relevant paras read as follows:
“35. This court is of the view that the doctrine of necessity has to be invoked in the present case. The legislative intent is of the continuity of IPAB and not its cessation because of a vacancy in its technical membership. If the post of Technical Member is lying vacant, IPAB can proceed to hear the urgent matters and the orders passed would not suffer invalidity on the ground of lack of Coram.
36. Applying the doctrine of necessity and following the principles laid down in Election Commission of India(supra), Kwality Restaurant(supra), Talluri Srinivas (supra) and Bharat Bijlee Limited(supra), this court holds that the Chairman, IPAB and the Technical Member(Plant Varieties Protection) are competent to hear the urgent matters relating to the Patents, Trade Marks and Copyright till the vacancies of other Technical Members are filled up and the orders passed would not suffer invalidity on the ground of lack of Coram.
37. If the Technical Member(Plant Varieties Protection) is not available for any reason or recuses, Chairman, IPAB can proceed to hear the urgent matters.
38. In patent matters, the Chairman, IPAB is at liberty to take the expert opinion of scientific advisor from the panel of scientific advisors notified under Section 115 of the Patents Act.
39. The Chairman, IPAB shall ensure compliance of these directions to ensure continuity of the functioning of the IPAB.”
Intellectual Property Attorneys … vs The Controller General Of …
Decided on 11 May, 2020 by Delhi High Court
W.P.(C) No.3059/2020
In this case, the Delhi High Court clarified that the judgment of the Supreme Court with respect to limitations and timelines relating to proceedings, filings and fee payments before Courts, Tribunals and Authorities will apply to intellectual property matters as well. The Court stated that limitations will be removed and timelines extended from 15th March, 2020. The deadline for compliance and protection pertaining to limitations was extended in the case until the Supreme Court decides otherwise.
Cde Asia Limited (Plaintiff) vs Jaideep Shekhar & Anr (Defendants)
Decided on 24 February, 2020 by Delhi High Court
(CS(COMM) 124/2019).
The Plaintiff in the case filed an infringement suit claiming that the Defendants infringed its patent and design relating to “System Device Process for Classification of Various Materials.” In response the Defendants filed an application under Order VII Rules 10 and 11 for rejection of the plaint, wherein they argued that the plaint was not maintainable based on the post-grant opposition filed by the Defendants under Section 25 of the Patents Act and that the cause of action did not arise in Delhi. The Court dismissed the application stating that the suit is maintainable though an opposition was filed as patent rights begin from the date of grant, and because the Defendants have business operations in Delhi. The Court also pointed out in the case that the Defendants do not have the option of pursuing opposition and counterclaim for revocation simultaneously as they are alternative remedies available to the Defendants.
Bristol Myers Squibb Holdings vs Natco Pharma
Decided on 23 January, 2020, by Delhi High Court
(CS(COMM) 342/2019 & IA No.9768/2019).
In this case, the Defendant, NATCO Pharma, filed an interim application for stay of proceedings under Section 10 of CPC as they had earlier filed a case against the Plaintiff, Bristol Myers Squibb Holdings, in Hyderabad. The case filed by the Defendant in Hyderabad was prayed for declaration of non-infringement of Plaintiff’s patent and injunction restraining groundless threats, among others. Following the Defendant’s suit in Hyderabad, the Plaintiff filed a suit for patent infringement against the Defendant before the Delhi High Court, which the Defendant argued has to be stayed.
After hearing the parties, the Court held that the suit before the Delhi High Court need not be stayed because the reliefs claimed by the Defendant in the Hyderabad suit were not founded in the Patents Act, but in the Specific Relief Act. The Court also pointed out that the declaration of invalidity pleaded by the Defendant cannot be decided by the Hyderabad Court. Stating that the Defendant’s suit was an abuse of process and was filed with an ulterior motive, the Court dismissed the interim application.
Bristol-Myers Squibb Holdings (Plaintiff) vs Bdr Pharmaceuticals (Defendant)
Decided on: 30th January, 2020 by Delhi High Court
(CS(COMM) 27/2020.)
In this case, the Court granted an interim injunction to the Plaintiff against the Defendant stating that the Defendant did not have a prima facie case for revoking the suit patent. The patent in the case related to “Lactam-Containing Compounds and Derivatives Thereof as Factor Xa Inhibitors.” The Defendant in the case argued that the invention was obvious based on a combination of prior arts, and that the invention did not pass the efficacy muster under Section 3(d). After reviewing the prior art, the Court stated that the references taught away from the invention in question, which makes the invention non-obvious. As per the Court, a person with ordinary skill would not arrive at the invention without hind sight analysis, which is not permitted. With respect to Section 3(d), the Court stated that the fact that the product was launched in the market after the patent filing itself indicated efficacy.
Para 36 of the judgment, which summarizes some important inventive step principles reads as follows:
“36. From the judgments as noted above, some of the principles which govern the field to find out whether an invention is obvious or not can be summed up as under:-
(i) A hindsight reconstruction by using the patent in question as a guide through the maze of prior art references in the right way so as to achieve the result of the claim in the suit, is required to be avoided.
(ii) The patent challenger must demonstrate the selection of a lead compound based on its promising useful properties and not a hindsight driven search for structurally similar compounds.
(iii) There should be no teachings away from the patent in question in the prior art.
(iv) Mere structural similarity cannot form the basis of selection of lead compound in a prior art and the structural similarity in the prior art document must give reason or motivation to make the claim composition.
(v) Though mosaic of prior art documents may be done in order to claim obviousness, however, in doing so, the party claiming obviousness must be able to demonstrate not only the prior art exists but how the person of ordinary skill in the art would have been led to combine the relevant components from the mosaic of prior art.
(vi) It has to be borne in mind, small changes in structures can have unpredictable pharmacological effects and thus, structural similarity alone is not sufficient to motivate to selection of the lead compound.
(vii) Though it would be tempting to put together a combination of prior arts but this requires a significant degree of hindsight, both in selection of relevant disclosures from these documents and also in disregarding the irrelevant or unhelpful teachings in them.”
Astrazeneca Ab & Anr. (Plaintiff) vs Emcure Pharmaceuticals Limited and Others (Defendants)
Decided on 15 January, 2020 by Delhi High Court.
(CS(COMM) 561/2019)
This case involved patents over a pharmaceutical compound called TICAGRELOR, which is used as oral anti-platelet treatment for Acute Coronary Syndrome. The Plaintiff in the case prayed for an ad interim injunction, which was contested by the Defendants primarily on grounds of invalidity based on patentability. They argued that disclosure of the compound in the genus patent through markush claim precluded its patentability through the species patent in suit. The Court rejected the argument by stating that a markush claim in a patent does not make a subsequent patent claiming one of the markush compounds unpatentable. As the compound in question was launched after filing of the species patent in suit, the Court pointed out that the genus patent does not affect its patentability. It also relied on US litigation and other materials to arrive at the said conclusion. However, the Court refused to grant the interim injunction as the patent had expired. The Court asked the Defendants to maintain accounts until the patent expiry date.
