2019 has been an important year for IP in India. In this series of posts, we have attempted to provide short summaries of IP cases decided in India. This post focuses on patent cases decided by Indian Courts in 2019. Both interim orders and final judgments are included in the post.
Supreme Court Case
Monsanto Technology LLC and Ors. Vs. Nuziveedu Seeds Ltd. and Ors., MANU/SC/0027/2019.
Decided On: 08.01.2019
Court: Supreme Court of India
The patented invention in the case related to a DNA sequence called NAS, which when inserted into a plant cell provides insect tolerance to the plant. On appeal from the interim injunction of the Single Judge in an infringement suit, the Division Bench of the Delhi High Court decided the counterclaim of the defendant for revocation summarily. Taking up the case on special leave, the Supreme Court held that a decision on revocation of a patent requires a trial, and cannot be decided in a summary manner. It stated that the Division Bench should have confined its decision to the injunctive relief in question, and remanded the case back to the Single Judge for a full trial in accordance with the law.
High Court Cases
Ferid Allani Vs. Union of India and Ors., MANU/DE/4323/2019.
Decided On: 12.12.2019
Court: Delhi High Court
This case involves a patent application relating to a method and device for accessing information sources and services on the web. The patent application was rejected based on Section 3(k) of the Patents Act by the Controller. The Court directed the Controller to re-examine the patent application based on the fact that only computer programs per se are not patentable in India, and that a computer program that has technical effect or technical contribution is not a computer program per se. The Court stated in the case that computer programs embedded in digital or electronic devices must be tested for technical effect, and that inventions relating to computer programs must be examined in the context of modern technology. It stated that computer programs cannot be denied patent protection if they satisfy the requisite standards under the law.
Astrazeneca Ab & Ors vs P Kumar & Anr
Decided on 8 August, 2019
Court: Delhi High Court
The Delhi High Court in this case vacated interim injunctions against defendants with respect to species, polymorph and formulation patents relating to TICAGRELOR, which is used as a platelet aggregation inhibitor. The Court arrived at the conclusion based on the reasoning that the defendants raised a credible challenge to patent validity of plaintiff’s patents on grounds of novelty, inventive step, and Section 3d. The Court in the case relied heavily on an expired genus patent of the plaintiff, which covered several species including TICAGRELOR. The Court stated that the genus patent covered TICAGRELOR, and that the said patent’s specification and statements of working corroborated the same. The same is also substantiated by the infringement suits filed by the plaintiff against Milan and others in the US, where claims for infringement of TICAGRELOR have been made.
As TICAGRELOR was disclosed in the genus patent, the Court reasoned that novelty and inventive step of the suit patents may be seriously questioned. As the plaintiff did not submit any data with respect to efficacy, the Court stated that the patent validity is also in question based on Section 3d. Based on the aforesaid, the Court vacated the injunctions against defendants and directed the defendants to submit accounts to the Court at regular intervals until the case is finally decided.
Available at: https://indiankanoon.org/doc/112512943/, visited on 22nd February, 2020.
Gaur Hari Guchhait and Ors. Vs. Shogun Organics Lt, MANU/DE/3516/2019
Decided On: 11.10.2019
Court: Delhi High Court
This case involved a process patent relating to manufacture of d-trans Allethrin, which is used as an active ingredient in mosquito repellents. Both the Appellants and Respondents in this case registered their products under the Insecticides Act and manufacture d-trans Allethrin. The Respondents hold a patent on a process for manufacturing d-trans Allethrin, which the Appellants claimed is invalid by virtue of prior disclosure to the Government under the Insecticides Act. The Court did not accept this argument, and concluded that the Appellants are liable for infringement as they did not show sufficient evidence to prove that they are using a different process to make d-trans Allethrin. On the other hand, the Court was satisfied with the evidence provided by the Respondent with respect to use of the patented process by the Appellants.
Novartis Ag & Anr. vs Natco Pharma Limited
Decided on 20 August, 2019
Court: Delhi High Court
In this case, the Delhi High Court vacated the interim order against NATCO following the revocation of the suit patent granted to Novartis with respect to Ceritinib used in treatment of lung cancer. Though Novartis filed an appeal before the IPAB, the Court held that the patent is considered to be invalid unless the decision is reversed by the IPAB.
Available at: https://indiankanoon.org/doc/184497595/, visited on 22 February, 2020.
Communication Components … vs Ace Technologies Corp. And Ors.
Decided on 12 July, 2019
Court: Delhi High Court
The Court in this case granted an interim injunction in favour of the plaintiff, which holds a patent entitled, Asymmetrical Beams for Spectrum Efficiency. The Court decided to grant an interim injunction based on the following conclusions:
(a) Substantial change in circumstances had taken place since the first judgment of the Ld. Single Judge dated 4th November, 2011, in Ten XC v. Mobi Antenna, where an interim injunction was refused as a credible question of patent validity was raised;
(b) The Defendants withheld vital information, by not disclosing the beam patterns of their antennae;
(c) The Plaintiff corresponded with the Defendants since 2017, and notified the Defendants of their patent rights. The Defendants‟ email in response thereto was merely acknowledging receipt of the Plaintiff‟s notice. There has been no other response by the Defendants;
(d) When any party is notified of patent rights, there exists an obligation on the said party to either challenge the patent or rebut the allegations made in the notice. It cannot simply choose to wait for the Plaintiff to file a suit for infringement, and in the said suit, withhold crucial and relevant information and vital data;
(e) Patent rights are limited in nature – especially in the telecommunication industry, technologies are changing rapidly. The Defendants having not responded and having not disclosed crucial information to the Court, are liable to be put to terms; and
(f) The fact that the Plaintiff had already licensed its patents, and the present patent not being a standard essential patent, the Plaintiff has a right to insist for an injunction once infringement is established. However, in a case where the Plaintiff was willing to license the patent and the Defendants have merely procrastinated, the Defendants can be put to terms.
The Court in the case asked the defendants to deposit 54.5 crores to continue its activities with respect to antennas. If they do not deposit the amount, the Court stated that they would be restrained from dealing with the antennas covered under the plaintiff’s patent. The Court stated in the case that prosecution in foreign jurisdictions has only limited significance at a general level to understand the invention. The prosecution history in other countries cannot be used to define scope of claims in India. The Court gave a good understanding of the objective of patent law, and principles for constructing patent claims. It stated that scope of patent claims must be based on purposive interpretation.
Available at: https://indiankanoon.org/doc/181712592/?type=print, visited on 22nd February, 2020.
Natco Pharma Limited vs Bayer Healthcare Llc
Decided on 11 July, 2019
Court: Delhi High Court
In this case, Bayer sued NATCO for patent infringement of its patented drug, Regorafenib, and prayed for a permanent injunction. Bayer asked for an interim injunction during the pendency of the suit, which was granted by the single judge based on its exparte order in the Sterlite Technologies case. On appeal, the Division Bench of the Delhi High Court held that a decision on interim injunction cannot be made without assessing the factors laid down by the Supreme Court: Prima facie case; Balance of convenience and Irreparable loss/harm. It stated that the decision on interim injunction must reflect the consideration and analysis of the said factors, and that the order cannot be vague (Paras 25 to 27). The Court also pointed out that patent cases form a genus under which pharma patent cases form a species, which require certain additional considerations such as public interest, public health, and so on, based on cases decided earlier (Para 21). The Court remanded the case to the single judge for a decision in line with the principles laid down in its judgment.
Available at: https://indiankanoon.org/doc/52483234/?type=print, visited on 21st February, 2020.
The Regents of the University of California Vs. Union of India and Ors., MANU/DE/1719/2019.
Decided On: 16.05.2019
Court: Delhi High Court
The Regents of the University of California (“Petitioner”) filed a petition before the Delhi High Court challenging the order of the Controller rejecting its patent application pertaining to ‘Enzalutamide’ following pre-grant representations filed by several parties. The Petitioner contended in the case that the Controller by not considering affidavits of experts, and by accepting additional submissions after oral submissions violated principles of natural justice. The Court agreed with the Petitioner and set aside the order of the Controller and remanded the application to the Controller for consideration and decision afresh. The Court stated in the case that post grant representation is part of the examination process, and that evidence need not be submitted by way of an affidavit. It further pointed out that an opportunity of hearing will be provided if requested by the parties, and that the representation will be decided along with the decision after examination. It stated that expert affidavits must be given due consideration, and that the patent applicant must be given an opportunity to respond to any submissions or evidence submitted by the opponents.
Bayer Corporation vs Union Of India & Ors.,
Decided on 22 April, 2019
Court: High Court of Delhi
In this case, the Delhi High Court decided two appeals, which related to the scope of Section 107A of the Patents Act. The first case was a writ petition filed by Bayer against NATCO asking the Court to direct Customs Authorities to seize its patented product, Sorafenib (under compulsory license) to NATCO, and stop NATCO from exporting the drug to China for purposes of conducting research to develop information for acquiring regulatory approval. The second was an infringement suit by Bayer against Alembic asking the Court to injunct Alembic from manufacturing and exporting its patented product, Rivaroxaban, to the European Union. In both the cases, the question was whether Section 107A permits export of a patented drug for purposes of research or experiment to develop information for use in acquiring regulatory approval in another country.
The Court held in the case as follows:
a. The term “sale” used in Section 107A includes export for purposes of acquiring regulatory approval in another country (Para 84);
b. Section 107A is not an exception to Section 48, which provides the rights of the patent holder (Para 89);
c. Section 107A extends to exporting of the patented invention, and not merely information generated from research and experiments in India (Para 91);
d. The expression, “making, constructing, using, selling or importing patented articles solely for uses reasonably related to development and submission of information required under any law for the time being in force…… or in a country other than India that regulates the manufacturing, construction, use, sale or import of any product …,” in Section 107A must be interpreted broadly to cover all uses required for research and development of data for regulatory approval (Para 92);
e. Fullest effect must be given to Section 107A in the context of its purpose (Para 93);
f. The quantity of the product or the place of research, experiment or development of information is not relevant for determination under Section 107A. What is relevant is the conduct or actions of the person in question, and whether the sale is for commercial purpose or for regulatory approval (Para 105);
g. The Court cannot decide cases under Section 107A under Article 226, and must conduct an examination of facts and review the evidence provided. The enquiry must consider among others, the patented product, exporting and importing party, product being exported, regulatory provisions in the country of export, and so on. (Para 111). If a case under Article 226 is entertained, the Court must limit itself to civil remedies; and
h. While deciding a case under Section 107A, Article 30 of the TRIPs Agreement must be borne in mind. Balancing of private rights against public interest must be carried out while deciding cases under the Section (Para 117).
Available at: https://indiankanoon.org/doc/85364944/, visited on 21st February, 2020.
The Controller of Patents and Ors. Vs. S.P. Chockalingam, MANU/TN/1409/2019.
Decided On: 05.03.2019
Court: Madras High Court
In a writ petition challenging the constitutional validity of Section 126 of the Patents Act, the Madras High Court held that the section is valid and not unconstitutional, and that it does not conflict with the right of advocates to practice under Section 30 of the Advocates Act. The challenge to the Patents Act primarily revolved around the requirement of having science, technology or engineering background to qualify as a patent agent, and not permitting advocates to carry out patent practice. The Court held in the case that providing for specific requirements or qualifications to carry out professional activities under a specific legislation is permissible, and that providing for such qualifications under the Patents Act, actions under which require knowledge of science is constitutionally valid. It stated that such a requirement does not in any manner deprive rights of advocates to practice under Section 30 of the Advocates Act as Section 132 of the Patents Act permits advocates to appear before the patent office on behalf of clients. The Court pointed out the difference between practising as a patent agent, which includes drawing up patent applications, signing them, and presenting them for registration, and practising as an advocate, which includes appearing before patent office and representing clients, and stated that the right of advocates to practice before the patent office is well safeguarded under the Patents Act.
Galatea Ltd. and Ors. Vs. Respondent: Diyora and Bhanderi Corporation and Ors., MANU/GJ/0089/2019.
Decided On: 19.02.2019
Court: Gujarat High Court
In this case, the Appellants filed an application under Section 151 of the Civil Procedure Court asking the Court to stay the infringement suit until the IPAB decides on the revocation petition with respect to the patent in suit. The revocation petition was filed before the infringement proceedings were initiated by the patent holder. Citing Alloy Wobins decision of the Supreme Court, the Court held that the Patents Act does not provide for stay of the proceedings after a revocation petition is initiated, and therefore, both the proceedings may proceed simultaneously. Unlike the Trademarks and Tenancy Act, the patent statute does not have a provision that requires the Court to stay proceedings, and there is therefore no need to stay the proceedings according to the Court.
Hindustan Unilever Limited Vs. Eureka Forbes Limited and Ors., MANU/DE/0842/2019.
Decided On: 19.02.2019
Court: Delhi High Court
In this case, the Court held that an infringement suit by one patent holder against another patent holder is sustainable, and that the case is not liable to be rejected under Order VII Rule 11.
Narendra Reddy Thappeta Vs. The Union of India and Ors., MANU/KA/1045/2019.
Decided On: 27.02.2019
Court: Karnataka High Court
This case relates to a patent agent in Bangalore, Narendra Thappeta, who gave up his Indian citizenship and acquired US citizenship. Narendra at this point of time happens to be a patent agent in both India and the United States. Apprehending that his Indian patent agentship might be revoked by the Controller under Rule 116)e) of the Patent Rules, Narendra challenged its constitutional validity. He argued that the rule is not in consonance with Section 130 of the Patents Act, and therefore, must be held ultra vires. The Karnataka High Court rejected his petition and held that Indian citizenship is a requirement under Section 126, and if one loses it, his patent agent registration may be revoked under Rule 116(e). The Court therefore stated that the rule is constitutionally valid.
Interestingly, the Court opined that Narendra ‘s patent agent status is not in jeopardy as no proceeding to revoke has been initiated against him, and that his patent agent registration is statutorily protected under Section 126(2) as he got his registration in 2001. It seems from the Court’s words that a person, who has registered as a patent agent before 2005 can relinquish his Indian citizenship and continue to be a patent agent. He can acquire citizenship of another country and maintain his patent agent status in two countries.
Panacea Biotee Ltd vs Union Of India And 4 Ors
Decided on 13 February, 2019
Court: Bombay High Court
The Court in this case refused to interfere in the post grant opposition proceedings based on the petitioner’s claim that the recommendations of the Opposition Board did not consider his submissions.
Available at: https://indiankanoon.org/doc/59834159/, visited on 22nd February, 2020.
La Renon Health Care Pvt., Ltd. Vs. Union of India and Ors., MANU/TN/0615/2019.
Decided On: 10.01.2019
Court: Madras High Court
In this case, the IPAB rejected a petition for revocation of a patent pertaining to a composition for augmenting kidney function using probiotics, and the petitioner filed a writ petition before the Madras High Court under Article 226 challenging the IPAB’s decision. After reviewing the grounds mentioned in the revocation petition and the decision of the IPAB, the Court held that it cannot interfere with the IPAB’s decision because there was no infirmity in its decision, and because the decision was not palpably erroneous. While arriving at its conclusion, the Court observed that the petitioner merely filed prior art references, but failed to explain how those references invalidate the patent in question. Though the petitioner claimed that the invention claimed is merely an admixture, no averments were made to substantiate the same. Furthermore, The Court pointed out that the petitioner filed for invalidation of 20 claims in the application while the granted patent had only 10 claims. Despite the petition’s inadequacies, the Court observed that the IPAB considered the pleadings and rejected the petition after due consideration of the petitioner’s pleadings. The Court refused to review the patent’s validity under Article 226.
The Madras High Court in this case gave an instructive overview of the philosophy of patent law and expounded some important patent principles.
Carlos Alberto Perez Lafuente Vs. UOI, W.P. (C) 4573/2012
Decided On: 10.01.2019
Court: Delhi High Court
The Appellant in this case filed a PCT Application designating India on 27th March, 2007 claiming priority from 28th March, 2006, and entered India by a national phase filing. He filed a request for examination for the application on 19th November, 2010. The patent office rejected the request for examination and deemed the application to be with drawn as it was filed after forty eight (48) months, the time limit prescribed under Rule 24B(1)(i) of Patent Rules. The Delhi High Court held in this case that the time limit for filing of request for examination under Rule 24B(1)(i) must be calculated from the earlier of priority or filing date, and that the timeline under the rule is mandatory, and not directory. It stated that any delay in filing a request for examination cannot be condoned under Rule 138 of Patent Rules.
Available at: https://indiankanoon.org/doc/16011818/, visited on 21st February, 2020.
