Delhi High Court
Eris Lifesciences Limited vs Controller Of Patents & Anr. on 20 July, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~10 & 29
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 20th July, 2023
+ C.O.(COMM.IPD-PAT) 3/2022 and I.A. 13062/2023
ERIS LIFESCIENCES LIMITED ..... Petitioner
Through: Ms. Rajeshwari H., & Ms. Swapnil
Gaur, Advs. (M: 9897905254)
versus
CONTROLLER OF PATENTS & ANR. ..... Respondents
Through: Mr. Harish Vaidyanathan Shankar,
CGSC, with Mr. Srish Kumar Mishra,
Mr. Sagar Mehlawat and Mr.
Alexander Mathai Paikaday, Advs.
(M: 9810788606)
Mr. Ashok Aggarwal, Senior
Counsel with Dr. Sanjay Kumar, Mr.
Arpita Sawhney, Mr. Arun Kumar
Jana, Ms. Meenal Khurana, Mr.
Harshit Dixit and Mr. Priyansh
Sharma, Advs. for R-2.
29 AND
+ C.O.(COMM.IPD-PAT) 38/2022 and I.A. 13076/2023, 13077/2023
MACLEODS PHARMACEUTICALS LTD ..... Petitioner
Through: Mr. G. Nataraj, Mr. Shashikant
Yadav, Ms. Harshita Agarwal, Ms.
Varsha Jhavar & Mr. Rahul Bhujbal,
Advs. (M: 9790020447)
versus
THE CONTROLLER OF PATENTS & ANR. ..... Respondents
Through: Mr. Harish Vaidyanathan Shankar,
CGSC, with Mr. Srish Kumar Mishra,
Mr. Sagar Mehlawat and Mr.
Alexander Mathai Paikaday, Advs.
Mr. Ashok Aggarwal, Senior
Signature Not Verified C.O.(COMM.IPD-PAT) 3/2022 & 38/2022 Page 1 of 10
Digitally Signed
By:RAHUL
Signing Date:28.07.2023
18:19:40
Counsel with Dr. Sanjay Kumar, Mr.
Arpita Sawhney, Mr. Arun Kumar
Jana, Ms. Meenal Khurana, Mr.
Harshit Dixit and Mr. Priyansh
Sharma, Advs. for R-2. (M:
9646996865)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode. I.A.13062/2023 in C.O.(COMM.IPD-PAT) 3/2022 I.A.13077/2023 in C.O.(COMM.IPD-PAT) 38/2022
2. These are applications filed by the Respondent No.2 seeking the transfer of the present revocation petitions, thereby consolidating the same with the suits for infringement of Patent no.IN243301 (hereinafter "IN'301"), bearing No. COMS 7/20221 and bearing No. COMS 3/20222 pending before the High Court of Himachal Pradesh.
3. The case of the Respondent No.2- Applicant who is the assignee of IN'301 is that the suits have been filed by the patentee in respect of the pharmaceutical preparations 'LINAGLIPTIN' and variants thereof, covered by the granted patent. It is further stated that in suit no. COMS 7/2022, an ad-interim injunction has been granted on 2nd June, 2022 by the said High Court. Additionally it is submitted that in suit no. COMS 3/2022 , vide order dated 21st April 2022, the High Court of Himachal Pradesh made the ad- interim protection granted by the court to Respondent No. 2 vide order dated 25th February 2022, absolute.
1Boehringer Ingelheim Pharma Gmbh & Co. KG & Anr. Vs. MSN Laboratories Pvt. Ltd. & Anr.
2Boehringer Ingelheim Pharma GMBH and Co. and Anr. vs. Macleods Pharmaceuticpals Ltd.
Signature Not Verified C.O.(COMM.IPD-PAT) 3/2022 & 38/2022 Page 2 of 10 Digitally Signed By:RAHUL Signing Date:28.07.2023 18:19:404. The ground on which the transfer is sought by Respondent no.2, is that the patent is expiring on 18th August, 2023 and that in any case, the grounds raised for seeking revocation and the defences raised in the injunction suit would be similar in view of Section 107 of the Patents Act, 1970 (hereinafter 'the Act').
5. The prayers in the two applications I.A.13062/2023 and I.A.13077/2023 are extracted hereunder:-
"(a). Transfer the present revocation petition thereby consolidating the same with the suit for infringement bearing number COMS 7 of 2022.
(b). Direct the Petitioner to withdraw the present revocation petition and file the same in terms of applicable law before Hon'ble High Court of Himachal Pradesh at Shimla; and
(c). Pass any other Order(s) as this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case."
6. Under the Patents Act, 1970, there are various remedies available to any person interested who wishes to seek revocation or raise issues relating to invalidity of a patent. The said remedies are:-
• Filing of a post-grant opposition under Section 25(2) of the Act within one year after the grant of a patent;
• Filing of a revocation petition under Section 64 of the Act; • Filing of a counter-claim under Section 64, in a suit for infringement of patent;
• Raising defences of invalidity under Section 107, in a suit for infringement of a patent.Signature Not Verified C.O.(COMM.IPD-PAT) 3/2022 & 38/2022 Page 3 of 10 Digitally Signed By:RAHUL Signing Date:28.07.2023 18:19:40
7. In the present case, the Petitioners herein filed revocation petitions i.e., C.O. (COMM.IPD-PAT) 3/2022 on 24th February 2022 and i.e., C.O.(COMM.IPD-PAT) 38/2022 on 17th February 2022, before this Court under section 64 of the Act. Subsequently, the Respondents herein, who are the owners of the patent chose to file a suit for infringement before the High Court of Himachal Pradesh. In the said suits, interim injunction has been granted and an appeal against the said injunction order is stated to be pending in one of the suits.
8. Moreover, the subject patent is also subject matter of another suit pending before this Court viz., CS (COMM) 239/2019 titled Boehringer Ingelheim Pharma GMBH & Co. KG & Ors. vs. Vee Excel Pharmaceuticals Private Ltd. and Ors. [Date of decision : 29.03.2023], wherein a ld. Single Judge of this Court has taken a prima facie view that the patent is vulnerable to revocation. The operative portion of the said order reads:
"1. The present six suits have been filed on behalf of the plaintiff no.1, Boehringer Ingelheim Pharma Gmbh And Co. Kg and its group company, plaintiff no.2, Boehringer Ingelheim (India) Pvt. Ltd., against various defendants, who are Indian Pharmaceutical Companies, seeking permanent injunction restraining the defendants from infringing Indian Patent No. IN 243301 titled "8 - (3 AMINOPIPERIDIN-1-YL)- XANTHINE COMPOUNDS". All the aforesaid six suits were accompanied by applications for grant of interim injunction under Order XXXIX Rules 1 and 2 of Code of Civil Procedure, 1908 (CPC).
xxx xxx xxx Signature Not Verified C.O.(COMM.IPD-PAT) 3/2022 & 38/2022 Page 4 of 10 Digitally Signed By:RAHUL Signing Date:28.07.2023 18:19:40 7.2. The plaintiff no. 1 was granted Patent IN 243301 (hereinafter also referred to as "suit patent" or "IN'301") on 5th October, 2010 under Section 43 of the Patents Act, 1970 (hereinafter "Patents Act") for the invention titled "8- (3 AMINOPIPERIDIN-1-YL)- XANTHINE COMPOUNDS" for a term of 20 years with effect from 18th August, 2003. The bibliographic details of the suit patent are set out hereunder:
xxx xxx xxx 7.8. The suit patent is the "species/selection patent"
covering the specific commercial embodiments being marketed by the plaintiff no. 2 in India. The compound, Linagliptin, covered and claimed by the suit patent was invented upon further research, which was carried out subsequent to the filing date of IN '719 and before the earliest priority date of the suit patent.
7.9. The defendants are engaged in manufacturing and selling the product, Linagliptin 5mg tablets Signature Not Verified C.O.(COMM.IPD-PAT) 3/2022 & 38/2022 Page 5 of 10 Digitally Signed By:RAHUL Signing Date:28.07.2023 18:19:40 (hereinafter 'infringing product'), covered by the suit patent. Therefore, the infringing product contains "Linagliptin" and infringes the suit patent.
7.10. Accordingly, the present suit has been filed on behalf of the plaintiffs seeking relief of permanent injunction along with other ancillary reliefs. Case set up in the written statement.
xxx xxx xxx
95. Based on the discussion above, I am of the prima facie view that the suit patent of the plaintiffs, i.e., IN'301 is vulnerable to revocation on the ground of prior claiming in terms of Section 64(1)(a) of the Patents Act. I am also of the prima facie view that by filing multiple patent claims in respect of the same invention, the plaintiffs have made an attempt towards evergreening the invention and re-monopolizing the same. These attempts on behalf of the patentees strike at the root of patent law in India. The aforesaid conduct of the plaintiffs defeats the rights of the manufacturers of generic drugs such as the defendant companies and is also detrimental towards the public interest."
The above order has been challenged and is pending in appeal before the ld. Division Bench. The prayer for transfer of revocation petitions is being sought by the Respondent/patentee in this background.
9. After the enactment of the Tribunal Reforms Act, 2021, all revocation petitions under Section 64 of the Patents Act,1970 are to be filed only in High Courts as the Intellectual Property Appellate Board ('IPAB') was abolished.
10. In terms of C.O.(COMM.IPD-PAT) 3/2021 titled Dr. Reddy's Laboratories Limited & Anr. v. the Controller of Patents & Ors. [Date of Signature Not Verified C.O.(COMM.IPD-PAT) 3/2022 & 38/2022 Page 6 of 10 Digitally Signed By:RAHUL Signing Date:28.07.2023 18:19:40 decision: 10th November 2022], a revocation petition can be filed wherever the effect of the patent is felt. The relevant portion of the said judgement is set out below:
"81. Section 48 of the 1970 Act vests exclusive rights in the patentee for making, using, offering for sale, selling or importing the patented product or any product made using the patented process. The impact of such a patent can be felt wherever a person interested carries on its business, including for manufacturing or selling or even packing or distributing the product in respect of which patent has been granted. Thus, the commercial interest of the person interested could be affected in various other jurisdictions apart from the jurisdiction where the patent was granted. Such a person may be aggrieved by the incorrect grant of the patent and may even challenge the validity of the patent.
82. Undoubtedly, the High Court in whose jurisdiction the patent was granted would be one of the fora which would have jurisdiction as the cause of action consists of a series of events beginning with the grant of the patent. In the opinion of this Court, since the dynamic effect of the patent, as contemplated in Girdhari Lal Gupta (supra), would also extend to other places where the commercial interest of the person interested may be affected, such other High Courts would also have jurisdiction to entertain revocation petitions, under section 64 of the Act. Thus, the expression 'High Court having territorial jurisdiction in that State or Union Territory' in case of revocation petitions would have to be decided on the basis of both the static effect and the dynamic effect of the grant of the patent. The place where the commercial interest of the applicant is affected would also be a relevant consideration to determine jurisdiction."Signature Not Verified C.O.(COMM.IPD-PAT) 3/2022 & 38/2022 Page 7 of 10 Digitally Signed By:RAHUL Signing Date:28.07.2023 18:19:40
11. It is worth noting that the subject patent was also granted by the Delhi branch of the Patent Office. Thus, the Petitioner has filed the revocation petition before this Court, which is maintainable under the Act.
12. Usually if a revocation petition and a suit for infringement are filed before this Court, the proceedings are consolidated. Even if the suit for infringement is before a Commercial Court, upon the raising of issues relating to invalidity, the matter is transferred to the High Court in view of Section 104 of the Patents Act, 1970.
13. Powers of consolidation under Rule 263 can be exercised by the Intellectual Property ('IP') Division of this Court, to consolidate proceedings relating to the same IP asset, provided they are pending either before the IP Division or before any of the Commercial Courts in Delhi. Such power does not extend beyond the territorial jurisdiction of the Delhi High Court.
14. However, what is being sought in the present application is transfer of the revocation petitions pending before the Delhi High Court to the High Court of Himachal Pradesh. Such a prayer is completely untenable, inasmuch as this Court cannot exercise power to transfer proceedings between two separate High Courts. The said power of transfer between two High Courts, can only be exercised in terms of Section 25 CPC, by the Supreme Court only. Prayer (a) in both the applications is, therefore, 3 Rule 26- Intellectual Property Division ('IPD') - Consolidation of IPR subject matters or cases or proceedings or disputes -Where there are multiple proceedings relating to the same or related IPR subject matter, irrespective of whether the said proceedings are between the same parties or not, the Court shall have the power and the discretion, wherever appropriate, to direct consolidation of proceedings, hearings, and also to direct consolidated recording of evidence/common trial and consolidated adjudication. If the Court is of the opinion that any matter pending before a Commercial Court is to be consolidated with a matter pending before the IPD, it may exercise powers of transfer under Section 24, Code of Civil Procedure, 1908 for transfer and consolidation of such matter to itself.
Signature Not Verified C.O.(COMM.IPD-PAT) 3/2022 & 38/2022 Page 8 of 10 Digitally Signed By:RAHUL Signing Date:28.07.2023 18:19:40unsustainable and is rejected.
15. Insofar as the prayer (b), to direct the Petitioner to withdraw the present revocation petitions and file the same before the High Court of Himachal Pradesh is concerned, vide order dated 27th July, 2022, this Court has considered the same issue and has held that the revocation petition is maintainable before this Court. The Court has also permitted the parties to take steps for transfer, if so advised. The relevant part of the said judgment is set out herein below:
"13. Considering the fact that the revocations petitions have been filed in Delhi and the suits for infringement of patent have been filed in Himachal Pradesh, either of the parties may take steps, if so advised, for seeking consolidation/transfer of the proceedings in accordance with law."
16. Clearly, neither of the parties have sought the transfer of these petitions to the High Court of Himachal Pradesh by filing any transfer petition before the Supreme Court.
17. In view thereof, the applications are completely misconceived and are, accordingly, dismissed.
I.A.13076/2023 in C.O.(COMM.IPD-PAT) 38/2022
18. This is an application for taking on record certain documents as detailed in paragraph 6 of the application. The said documents are as under:
"• Amended statement of defense of Sandoz before Federal Court, CA;
• Marked up comparison of complete specifications of IN '719 and IN '301; and • Affidavit of Dr. Matthias Eckhardt."
19. Considering the nature of the documents, the same may be relevant Signature Not Verified C.O.(COMM.IPD-PAT) 3/2022 & 38/2022 Page 9 of 10 Digitally Signed By:RAHUL Signing Date:28.07.2023 18:19:40 for considering the plea of revocation. The same are taken on record, subject to the objections which the Petitioners may wish to raise qua these documents.
20. Mr. Nataraj, ld. Counsel for the Petitioner, has been given an opportunity to file the rebuttal documents. However, he submits that he does not wish to file any documents.
21. The application is accordingly disposed of.
C.O.(COMM.IPD-PAT) 3/2022 & C.O.(COMM.IPD-PAT) 38/2022
22. The Court has been informed that there are suits wherein counter claims have also been filed seeking revocation.
23. In any event, the present revocation petitions are substantive revocation petitions under Section 64 of the Act. Pleadings are complete in these petitions. These petitions can be heard and the counterclaims need not to come in the way of hearings in these petitions.
24. Ld. counsel for the Petitioner has made a prayer for early hearing in these matters as the patent itself is going to expire on 18th August, 2023.
25. Due to the heavy board of this Court, it is not possible to hear the petitions and render judgment before the said date.
26. List for hearing on 8th December, 2023.
PRATHIBA M. SINGH JUDGE JULY 20, 2023/dk/rp [corrected & released on 27th July, 2023] Signature Not Verified C.O.(COMM.IPD-PAT) 3/2022 & 38/2022 Page 10 of 10 Digitally Signed By:RAHUL Signing Date:28.07.2023 18:19:40