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Fmc Corporation & Ors vs Best Crop Science Llp & Anr on 12 September, 2022

Author: Navin Chawla

Bench: Navin Chawla

                    $~25
                    *    IN THE HIGH COURT OF DELHI AT NEW DELHI
                    +    CS(COMM) 608/2022
                         FMC CORPORATION & ORS.                     ..... Plaintiffs
                                       Through: Dr.Sanjay      Kumar,        Ms.Arpita
                                                Sawhney, Mr.Arun Kumar Jana,
                                                Ms.Meenal Khurana, Mr.Harshit
                                                Dixit, Mr.Priyansh Sharma, Advs.
                                       versus

                             BEST CROP SCIENCE LLP & ANR.               ..... Defendants
                                           Through: Mr.Chander Lall, Sr. Adv. with
                                                    Ms.Sneha Jain, Dr.Shilpa Arora,
                                                    Dr.Victor       Vaibhav        Tandon,
                                                    Ms.Priyam       Lizmary        Cherian,
                                                    Ms.Shruti Jain, Advs.

                             CORAM:
                             HON'BLE MR. JUSTICE NAVIN CHAWLA
                                          ORDER

                    %                     12.09.2022
                    CAV. 264-65/2022

1. As the learned counsel for the defendants have entered appearance and have been heard, the caveats stand discharged.

2. By this application, the plaintiffs seek time to file the requisite Court Fees.

3. For the reasons stated in the application, the application is allowed. The plaintiffs shall deposit the requisite Court Fee within a period of one week from today.

4. As the suit is at the initial stage with even summons having not been Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:13.09.2022 17:24:15 issued, the application is allowed. The affidavit is taken on record. CS(COMM) 608/2022

5. Let the plaint be registered as a suit.

6. Issue summons to the defendants. Ms.Sneha Jain, Advocate accepts notice on behalf of the defendants. Let written statement(s) be filed within a period of 30 days. Along with the written statement(s), the defendant(s) shall also file the affidavit(s) of admission/denial of the documents of the plaintiffs, without which the written statement(s) shall not be taken on record.

7. Liberty is given to the plaintiffs to file a replication(s) within a period of 15 days of the receipt of the written statement(s). Along with the replication(s), if any, filed by the plaintiffs, the affidavit(s) of admission/denial of documents of the defendants be filed by the plaintiffs, without which the replication(s) shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.

8. List before the learned Joint Registrar (Judicial) for completion of pleadings and further proceedings on 30th January, 2023.

9. Issue notice. Notice is accepted by Ms. Sneha Jain, Advocate, on behalf of the defendants.

10. The learned counsel for the plaintiffs submits that the present suit has been filed seeking permanent injunction and other reliefs in relation to Indian Patent No. 298645 (IN_' '-645) of the plaintiffs. The plaintiffs alleges that the defendants are using the process/method patented under IN_' '-645 to manufacture/prepare the compound Chlorantraniliprole (CTPR) Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:13.09.2022 17:24:15 under the brand name "CITIGEN" and offering for sale and selling the said product obtained directly by that process which is evident from plaintiffs' Expert Report which has been filed by them after the filing of the present suit, on procuring the product, CTPR/"CITIGEN" manufactured by the defendants by using the process patent granted under IN '645. He further submits that there is a restraint order already operating against the defendants in previous suits and relies upon order dated 07.07.2021 passed in CS (COMM) 69/2021. The learned counsel for the plaintiffs has further drawn the attention to paragraph 32 of the plaint and submits that the defendants have failed to place the details of their process for manufacturing CTPR despite applications seeking discovery on oath filed by the plaintiffs in CS(COMM) 67/2021 and CS (COMM) 199/2021. Accordingly, an adverse inference needs to be drawn against the defendants. It was further submitted that defendant No.1 refused to share the information with the plaintiffs under the Right to Information Act, 2005 when such request was made by the learned counsel for plaintiff's before CIB&RC. It was further submitted that in at similar matter, Coordinate Bench of this Court while restraining the defendant therein has appointed scientific advisors under Section 115 of the Patents Act, 1970. He urges for similar order in this suit as well. It was further submitted that since the plaintiffs have been able to procure the product, CTPR/"CITIGEN" manufactured by the defendants, the Court may consider sending the same to the certified lab for testing it to ascertain the process used.

11. On the other hand, the learned senior counsel for the defendants contests the plaintiffs' submissions on the following grounds:

a. This is a classic case of evergreening as plaintiffs have prior Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:13.09.2022 17:24:15 expired product and process patents (IN 201307 (IN '307) and IN 213332), on basis of which the above injunction was granted. The said patents expired on 13.08.2022. b. The plaintiffs have got eight other granted process patents and four pending patent applications for process for CTPR manufacture, which are nothing but evergreening plaintiffs' rights, in order to extend the life of the product patent IN'307 beyond its expiry on 13.08.2022 through the repeated filings of these additional process patents/applications. c. Surprisingly, for each of these other granted process patents, none of them have been worked. In fact, even in respect of the suit patent being IN'645, the claim in paragraph 25 of the plaint that the suit patent has been worked on a commercial scale is belied by the documents filed at pages 66-72 with the suit. The suit is liable to be dismissed on this ground alone. In any event, it is settled law that no interim injunction can be granted in light of non-working of the suit patent.

d. There is another gross misstatement based on which the suit ought to be rejected. It is asserted in paragraph 3 that there is 'cogent and veritable evidence' to establish that defendants are using the process patented in IN '645, which statement is contrary to assertion in paragraph 32 of the plaint that the plaintiffs despite their best efforts have been unable to ascertain the defendants' process.

12. Without prejudice to his assertions above, the learned senior counsel for the defendants submits that in any case defendants claim non-

infringement in addition to invalidity of the suit patent. He submits that the process being used by the defendants to manufacture CTPR is a different process and does not infringe the process patented in IN '645. The learned senior counsel for the defendants submits that his client is willing to be bound by this statement.

13. At this stage, the learned counsel for the plaintiffs submits that in the absence of knowing the defendants' process, its claim of non-infringement cannot be accepted.

14. The learned senior counsel for the defendants submits that his client is agreeable to disclose his process albeit under the aegis of a duly constituted Confidentiality Club comprising of counsels and independent experts (and not plaintiffs' or their in-house experts) only as their process constitutes proprietary trade secret.

15. This Court is of the view that it may be appropriate to consider the above submissions after Independent Experts/ Scientific Advisers have had the opportunity to evaluate the report of the plaintiffs' expert, documents/information submitted by the defendants regarding its process and the independent Court appointed lab report, and also mapped the defendants' process against the suit patent. The suggestion of the Court has found favour from the counsel for the parties.

16. With the consent of the parties, it is agreed that a Confidentiality Club shall be constituted comprising of counsels and independent experts (and not plaintiffs' or their in-house experts) only. It is further directed that:

a. A Confidentiality Club is constituted which will comprise only of the nominated lawyers and experts of the parties as also the Independent Experts / Scientific Advisers;

b. The parties shall provide the names of the nominated lawyers and their respective experts within two days and all such members shall file appropriate affidavits binding themselves to the terms of the Confidentiality Club;

c. The defendants shall disclose all the documents/information as detailed out by the plaintiffs in paragraph 37(i) and (ii) of the plaint within a period of three days from today under the aegis of the Confidentiality Club formed above. In addition, any further information required by the Independent Expert/Scientific Advisor from either party, such party shall comply with such requisition. Further, the defendants shall allow the Independent Expert/Scientific Advisor, to visit the factory of the defendants to verify the process adopted by the defendants for manufacturing CTPR/"CITIGEN", if so required by them.

d. The Local Commissioner shall purchase the sample product/CTPR of the defendants from the open market and sent the same to the certified independent Lab appointed by the Court, that is, Shriram Institute For Industrial Research (Unit of Shriram Scientific and Industrial Research Foundation), 19 University Road, Delhi-110007 for testing/analyzing the said product of the defendants. The certified independent Lab appointed by the Court shall independently analyze the said product and submit an "Independent Lab Report" on the structural formula/concentration of the product of the defendants and its Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:13.09.2022 17:24:15 impurity and reactants alongwith the certificate of analysis therefore to the Independent Expert/Scientific Advisor within five days of the date of the receipt of the sample ; e. The parties shall exchange their respective Terms of Reference for the Scientific Advisors within two days of the receipt of documents/information as detailed out in paragraph 37 of the plaint and receipt of "Independent Lab Report" along with the "Certificate of Analysis";

f. The parties shall suggest the names of the Scientific Advisors to be appointed by the Court within two days thereafter; g. Thereafter, reference shall be made to the Scientific Advisors to give their opinion on the Terms of Reference as per para (e) for submission of their Report, after considering the following documents:

i. The plaintiffs' expert report, ii. The "Independent Lab Report" on the reference quoted hereinabove along with the "Certificate of Analysis"; iii. Complete patent specification of the suit patent IN '645

17. The defendants shall be bound by the statement made above recorded in paragraph 4 and are further directed to disclose on Affidavit the sale of its CTPR product(s) from the day of its launch by filing an affidavit in that regard. Such report may be filed on a quarterly basis.

18. Mr. Rajnish K. Jha, Advocate, Address: 386, Lawyers Chambers II, Delhi High Court, New Delhi, Mob. No. 8800690988, is appointed as a Local Commissioner to carry out the mandate as given in paragraph 16 (d) Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:13.09.2022 17:24:15 above. The fee of the Local Commissioner is fixed at Rs.50,000/-. The fee of the Local Commissioner and the laboratory shall be borne in the first instance by the plaintiffs.

19. To come up on 10th October, 2022 for appointment of Scientific Advisers and finalization of the Terms of reference thereof.

20. In view of the above order passed today, the learned counsel for the plaintiffs does not press this application.

21. The application is disposed of accordingly.

22. Issue notice. Notice is accepted by Ms.Sneha Jain, Advocate on behalf of the defendants.

23. Let reply be filed within a period of four weeks from today. Rejoinder thereto, if any, be filed within a period of two weeks thereafter.

24. List before the learned Joint Registrar (Judicial) for completion of pleadings on 30th January, 2023.

NAVIN CHAWLA, J SEPTEMBER 12, 2022/Arya Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:13.09.2022 17:24:15