Delhi High Court
Cipla Ltd. vs F Hoffman La Rochee Ltd & Anr on 1 May, 2013
Author: Pradeep Nandrajog
Bench: Pradeep Nandrajog, V.Kameswar Rao
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: May 01, 2013
+ CM No.6436/2013 in RFA(OS) 92/2012
F. HOFFMANN- LA ROCHEE LTD & ANR ..... Appellants
Represented by: Mr.Chetan Sharma, Sr.Advocate
instructed by Mr.Pravin Anand,
Advocate with Mr.Shrawan Chopra,
Ms.Prachi Agarwal, Advocates.
versus
CIPLA LTD. ..... Respondent
Represented by: Ms.Pratibha M.Singh, Advocate with
Ms.Anusuya Mehrotra, Ms.Ujjwala
Jeremiah, Advocates.
Mr. Anand Grover, Sr.Advocate
instructed by with Ms.Neharika,
Ms.Manika Arora, Mr.Mihir Samson,
Ms.Suhrita Majumdar, Mr.Dominie
Alvaves, Advocates for applicant in
CM No.6436/2013.
CM No.6433/2013 in RFA(OS) 103/2012
CIPLA LTD ..... Appellant
Represented by: Ms.Pratibha M.Singh, Advocate with
Ms.Anusuya Mehrotra, Ms.Ujjwala
Jeremiah, Advocates.
versus
F HOFFMAN LA ROCHEE LTD & ANR ..... Respondents
Represented by: Mr.Pravin Anand, Advocate with
Mr.Shrawan Chopra, Ms.Prachi
Agarwal and Ms.Nayantara Sanyal,
Advocates.
CM No.6436/2013 in RFA (OS) 92/2012
CM No.6433/2013 in RFA (OS) 103/2012 Page 1 of 5
Mr. Anand Grover, Sr.Advocate
instructed by with Ms.Neharika,
Ms.Manika Arora, Mr.Mihir Samson,
Ms.Suhrita Majumdar, Mr.Dominie
Alvaves, Advocates for applicant in
CM No.6433/2013.
CORAM:
HON'BLE MR. JUSTICE PRADEEP NANDRAJOG
HON'BLE MR.JUSTICE V.KAMESWAR RAO
PRADEEP NANDRAJOG, J.
1. We shall be referring to the parties as 'Roche' and 'Cipla'.
2. With respect to a patent bearing No.196774 'Roche' sued 'Cipla' alleging infringement of the patent. Apart from damages, decree for permanent injunction was prayed for.
3. By way of a counter claim filed by 'Cipla' it was prayed that patent granted in favour of 'Roche' be revoked. On merits it was claimed by 'Cipla' that it was not infringing the patent granted to 'Roche' vide No.196774.
4. Patent in favour of ´Roche' pertains to a Hydrochloride drug used in treatment of cancer, which we may call 'Polymer A'. It so happened that 'Roche' had applied for another patent pertaining to another Hydrochloride polymer, which we may call 'Polymer B' stating that it was distinctively dis-similar to the earlier polymer (A) for which it had obtained a patent. Novelty and distinctiveness vis-a-vis the second polymer (B) was claimed. The claim for the second patent failed. 'Roche' rested. It did not challenge the decision of the Controller of Patents. The decision rejecting the claim for patent to be granted for Polymer B has become final.
CM No.6436/2013 in RFA (OS) 92/2012 CM No.6433/2013 in RFA (OS) 103/2012 Page 2 of 5
5. In other words 'Roche' has the protection of Patent No.196774. It would mean that 'Roche' cannot claim any injunction for violation of the second polymer 'B' statedly invented/developed by 'Roche'.
6. Of the various defences taken by 'Cipla' in the suit for injunction filed by 'Roche' it pleaded a defence under Section 8 read with Section 64 (1) (m) and (j) of the Patents Act, 1970 pertaining to revocation of the patent on the strength of which 'Roche' has sued.
7. Suffice would it be for us to note that as per Section 8, when an application for grant of a patent under the Patents Act, 1970 is filed, disclosure has to be made of similar patents sought in any country outside India in respect of the same or substantially the same invention in the manner prescribed. Section 64 enlists provisions for revocation of a patent, one of which is the applicant failing to disclose to the Controller of Patents the information required by Section 8.
8. With respect to non-disclosure of information contemplated by Section 8, in the context of the word 'may' used in Section 64 of the Patents Act, 1970, in the inter-se disputes between 'Roche' and 'Cipla'; notwithstanding 'Cipla' having made good the point with respect to the patent in question of 'Roche' having filed various applications in various jurisdictions abroad including India which were not disclosed to the Controller of Patents, the learned Single Judge declined to revoke the patent in favour of 'Roche' granted by the Controller of Patents.
9. With respect to the claim of injunction by 'Roche' the learned Single Judge has held that the drug manufactured by ´Cipla' does not violate the Patent No.196774 and since the claim for grant of patent in the second polymer 'B' stood rejected by the Controller of Patents, the learned CM No.6436/2013 in RFA (OS) 92/2012 CM No.6433/2013 in RFA (OS) 103/2012 Page 3 of 5 Single Judge has held that the question of patent violation with respect to said polymer would not arise.
10. Cross-appeals have been filed by the parties and have been admitted before a Division Bench for hearing.
11. Limited issue which arises today for our consideration is whether it would be appropriate for the Division Bench to require a revocation proceeding initiated by a third party before the IPAB pertaining to grant of patent vide Patent No.196774 in favour of 'Roche' to be deferred till the cross-appeals are decided.
12. The normal rule of law is that unless a power is specifically vested in a Court to restrain a party from prosecuting remedy before any Judicial Fora, only in exceptional circumstances should such an order; akin to an ante-suit injunction, be passed.
13. We do not find any such power under the Patents Act, 1970.
14. If we have a look to the Trade Marks Act, 1999, we find Section 124 thereof empowering the Court to stay the suit before it and not the rectification proceedings pending before the Authorities constituted under the Trade Marks Act, 1999.
15. What is the guidance we get from said provision?
16. Specialized Tribunals, wherever constituted should be left free to decide matters falling within their jurisdiction and it would be advisable for a Court, if law so empowers the Court, to defer proceedings before the Court. The reason is that specialized Tribunals have experts as Members of the Tribunal and their opinion would be valuable.
17. That apart, it may happen that seeking revocation of a patent before a Court, the defending party may allege non-disclosures CM No.6436/2013 in RFA (OS) 92/2012 CM No.6433/2013 in RFA (OS) 103/2012 Page 4 of 5 contemplated by Section 8, which may fall short of the discretion to be exercised by the Judge. But, a third party litigating on the same issue may plead non-disclosures having a span much more than the non-disclosure alleged by some other party. Meaning thereby, the span of non-disclosure may vary between the litigating parties.
18. We take on record the statement made by Mr.Anand Grover learned senior counsel who appeared for the third party applicant that before IPAB his client would be pressing the claim for revocation of the patent only on the ground of non-disclosure.
19. Under the circumstances we are of the opinion that the unreasoned one line interim order dated April 01, 2013, requiring proceedings before IPAB between 'Roche' and the applicant to be deferred beyond May 15, 2013 needs to be recalled.
20. The applications stand disposed of directing accordingly. Order dated April 01, 2013 is recalled. Proceedings before 'Roche' and the applicant before IPAB may continue.
21. No costs.
(PRADEEP NANDRAJOG) JUDGE (V. KAMESWAR RAO) JUDGE MAY 01, 2013 skb CM No.6436/2013 in RFA (OS) 92/2012 CM No.6433/2013 in RFA (OS) 103/2012 Page 5 of 5