Delhi High Court - Orders
Pawan Kumar Goel vs Dr. Dhan Singh & Anr on 14 March, 2024
$~19
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 672/2022, CC(COMM) 16/2023, I.A. 2594/2023, I.A.
7839/2023, I.A. 13948/2023, I.A. 15330/2023, I.A. 15331/2023, I.A.
15332/2023 & I.A. 15393/2023
PAWAN KUMAR GOEL ..... Plaintiff
Through: Mr. Vivek Ranjan Tiwary, Mr. Sajan
Shankar Prasad, Mr. V. Pandey and
Ms. Radhika, Advocates.
versus
DR. DHAN SINGH & ANR. ..... Defendants
Through: Mr. Vaibhav Vutts, Ms. Anupriya
Shyam, Ms. Sutapa Jena, Ms. A
Hasan and Ms. Yushika Dalmia,
Advocates.
CORAM:
HON'BLE MR. JUSTICE ANISH DAYAL
ORDER
% 14.03.2024 I.A. 2594/2023(for placing on record redacted documents)
1. This application has been filed by the defendants for non-disclosure of confidential information/trade secrets of the defendants' process of manufacture, seeking permission to place on redacted record documents under sealed cover.
2. Since the unredacted documents have already been supplied inter-se parties, this application is disposed of as being infructuous. I.A. 7839/2023(condonation of delay)
1. This application has been filed under Section 151 of the Code of Civil Procedure, 1908, by the plaintiff seeking condonation of delay in filing This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/03/2024 at 21:47:27 replication to the written statement.
2. Replication has now been taken on record.
3. Accordingly, this application is also disposed of as being infructuous. I.A. 15330/2023(seeking leave to file unredacted version of replication)
1. This application has been filed by the plaintiff seeking permission to place on record an unredacted version of the replication.
2. The plaintiff is permitted to file the same in an electronic form with a password protection.
3. Application is disposed of.
I.A. 15331/2023(condonation of delay)
1. This application has been filed by the plaintiff seeking condonation of delay in filing the replication to the unredacted written statement.
2. Considering the order above, replication will be taken on record. The plaintiff is permitted to file the same in an electronic form with a password protection
3. Accordingly, this application is disposed of as being infructuous. I.A. 15332/2023(seeking direction to make statement of admission/denial with respect to redacted documents)
1. This application has been filed by the plaintiff to file their statements of admission/denial in respect of redacted documents filed by the defendants.
2. The said statements be taken on record in an electronic form alongwith adequate password protection.
3. Application is disposed of.
I.A. 15393/2023(seeking leave to file expert report and business correspondences in a sealed cover)
1. This application has been filed by the plaintiff for taking on record expert report and business correspondences of plaintiff in a sealed cover.
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/03/2024 at 21:47:27
2. The same be placed on record in an electronic form with an adequate password protection.
3. Application is disposed of.
I.A. 15840/2022 (under Order XXXIX Rule 1 & 2 CPC)
1. This application has been filed on behalf of plaintiff seeking interim injunction against defendants restraining them from using, making, selling, exporting, distributing, advertising or taking any steps for manufacturing and dealing in any product including but not limited to 'Alpha Yohimbine' extracted from Rauwolfia Tetraphylla/Rauwolfia Canescens with purity greater than 90% (subject compound).
2. Plaintiff had filed the suit claiming infringement of Indian Patent 369150 (suit patent) which was in the process for extraction of the subject compound. The Patent was titled 'Novel Process for Extracting Alpha Yohimbine (Rauwolscine) from Rauwolfia Species'. The said compound Alpha Yohimbine /Rauwolscine HCL with purity/assay greater than 90% is extracted from Rauwolfia canescens/tetraphylla.
3. Plaintiff claims to be proprietor of chemical resources, a firm through which plaintiff trades various herbal extracts. Plaintiff through the proprietorship, manufactures and standardizes various herbal extracts and dietary supplements, one of which is the subject compound.
4. Summons were issued in the suit on 26th September, 2022 but the Court mentioned that it was not inclined to grant an ad interim ex parte injunction at that stage. Subsequently, defendants appeared and filed the written statement. There were issues relating to confidential information which were filed by defendant, in respect of the process that they adopted for the same subject compound. Consequently, a confidentiality club was instituted by order of this Court dated 15th March, 2023. Initially redacted documents and This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/03/2024 at 21:47:28 pleadings were filed and thereafter, un-redacted documents and pleadings were shared as part of the confidentiality club which subsequently by orders of this Court, including directions made above, have been taken up on record in encrypted form.
5. Counsel for plaintiff has pressed his application for interim injunction which is assessed as under.
6. Mr. Vivek Ranjan Tiwary, counsel for plaintiff has stated that the suit patent is of a process which was invented by plaintiff for the purposes of extraction of the subject compound in industrial quantities, in order to make it commercially viable. The said patent was granted in 2021 with the priority date of November, 2016. He therefore contends that the subject compound can be produced in industrial quantities only by adopting the patented process of plaintiff. He stresses on the fact that laboratory extraction is a very different situation than an industrial process and ensuring commercially viability. For the purposes of infringement of a processed patent, he adverts to Section 104A of the Patents Act, 1970, which is extracted as under for ease of reference:
"104-A. Burden of proof in case of suits concerning infringement--
(1) In any suit for infringement of a patent, where the subject-matter of patent is a process for obtaining a product, the court may direct the defendant to prove that the process used by him to obtain the product, identical to the product of the patented process, is different from the patented process if, --
(a) the subject-matter of the patent is a process for obtaining a new product; or
(b) there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving title or interest in the patent from him, has been unable through reasonable efforts to determine the process actually used:
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/03/2024 at 21:47:28 Provided that the patentee or a person deriving title or interest in the patent from him first proves that the product is identical to the product directly obtained by the patented process.
(2) In considering whether a party has discharged the burden imposed upon him by sub-section (1), the court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the court that it would be unreasonable to do so."
(emphasis added)
7. Counsel for plaintiff has focused on 104A(1)(b) of the Patents Act, 1970 to state that the Court may direct the defendants to prove that the process used by them to obtain the product which is identical to the product obtained by the patented process. Such proof can be in the form of the defendants proving that they had adopted a process to achieve an identical product, which the patentee has been unable through reasonable efforts, to determine the defendants' process. In essence, he submits that it is upon defendants to place evidence on record to show that process adopted by defendants is not infringing the patented process.
8. For this, he states defendants have relied on three categories of documents. Firstly, Batch Manufacturing Record (BMR), documents which are necessarily linked to an export of a pharmaceutical product and demonstrate as to the process adopted by the manufacturer, stagewise, for achieving the said product; secondly, Certificate of Analysis by defendants and thirdly, the documents which would exhibit the process adopted by defendants itself. In this case, he states that only drafted flow charts have been given by defendants to show the process, which does not provide any sufficient detail.
9. However, he states that none of these documents discharge the defendants' burden of proof, as required by section 104A of the Patents Act, 1970 and makes the following submissions with regard to the same:
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/03/2024 at 21:47:28 A) First, the BMRs provided by defendants are of the year 2015 which precede the priority date of plaintiff's patent and therefore, not be dispositive of the process adopted by defendants post 2018, when the patent application had been published.
B) Second, the certificate of analysis was of the year 2022, however, showed the compound in question, which shows the botanical source as 'Rauwolfia Vomitoria' and other certificates which are similar in nature. However, none of the certificates placed by defendants relate to botanical source being of Rauwolfia tetraphylla/canescens.
C) Third, the drafted flow charts purporting to show the process of defendants were inconsequential and sketchy at best and did not demonstrate that defendants' process was different.
10. Therefore, he contends that there is no proof, even prima facie filed by defendants, which would lead to a conclusion that the defendants' process which they continue to adopt post 2018, is not infringing the suit patent.
11. Counsel for defendants however refutes these submissions primarily on the ground that there is enough evidence on record to show that they were in fact manufacturing, marketing and exporting the subject compound since the years 2014-15. Therefore, he contends that they had adopted the process to produce the subject compound in industrial quantities much prior to patent application of plaintiff and in fact states on instructions that they continue to adopt the same process, which is not infringing that of the plaintiff. In support of this submission, attention of the Court has been drawn to various documents inter alia as under:
a) A licensing certificate issued by Assistant Drugs Controller cum Drug Licensing Authority dated 10th April, 2014. The said certificate is This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/03/2024 at 21:47:29 extracted as under:
b) Date wise list of invoices of domestic and export sales of subject compound, since 2014-15, have been provided along with copies of the invoices. The same would show that the earliest of invoices which had been filed by defendants is dated 30th January, 2015 of the subject compound which is consigned to an entity in Mumbai, Maharashtra for 2.2 kgs at a value of Rs.6,91,240/- (rest of the invoices referred to are till 2022-23).
c) Invoice for export sales of the subject compound, earliest of which is dated 9th April, 2015, which shows the consignee as an entity in USA for 1.5 kgs for a value of USD7950 (rest of the invoices referred to are till 2022-23).
d) Reference is made to batch numbers which are mentioned in the export invoice and related BMR. An illustrative BMR is shown of date 6th January, 2015 for the said subject compound, which shows the This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/03/2024 at 21:47:29 procedure adopted (this is evident from perusal of unredacted document which has been accessed through password by the Court).
12. Basis these documents, counsel for defendants submits that not only were they manufacturing the subject compound prior to patent application of plaintiff but it was also exactly the same compound of more than 90% concentration and being produced in industrial quantities for both domestic and international markets. Further, the BMR would show that there was a process which was adopted. He, therefore contends that at this stage, this would be enough evidence to prove that they had adopted a legitimate process which was prior to patent application filed by plaintiff for manufacture of the same subject compound in industrial quantities. It was emphasised that they continue to adopt the same process till date and are in no way infringing the plaintiffs process patent.
13. Based on these submissions, in the opinion of this Court, at this stage when the evidence is still to be led, plaintiff's plea for injunction may not be merited considering that prima facie there is evidence placed on record by defendants to show that defendants were already manufacturing the said subject compound through a process for industrial quantities. The fact that plaintiff secured a suit patent in 2018 effected from 2016 and granted in 2021, cannot suddenly exclude defendants from continuing to adopt the process which they did since 2014.
14. Possibly the question which would remain and which the counsel for plaintiff has canvassed is that post 2018, defendants have to prove that they have not changed their process from pre-2018 process to a different process which is infringing the suit patent. However, these aspects will be subject matter of evidence at trial, for which rights and contentions of the parties will remain open.
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/03/2024 at 21:47:29
15. At this stage, however, this Court does not find merit in the injunction application under Order XXXIX Rule 1 & 2.
16. The application is accordingly, disposed of.
CS(COMM) 672/2022
1. List on 22nd August, 2024.
2. Order be uploaded on the website of this Court.
ANISH DAYAL, J MARCH 14, 2024/kct/ig/sm/na This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 19/03/2024 at 21:47:30