Document Fragment View

Matching Fragments

this principle, Mr Mehta's argument that there is a presumption in favour of the validity of the patent, cannot be accepted."

17. The aforesaid aspect was dealt with in the judgment of Rajiv Shakdher, J. in AstraZeneca (supra). In the said case also, an argument was raised on behalf of the plaintiffs therein that since the suit patents are old, their validity has to be presumed. Relying upon the judgment in Bishwanath Prasad (supra), Rajiv Shakdher, J. in AstraZeneca (supra) came to the conclusion that the challenge to the validity of the patent can be made at any stage and what is relevant is not the stage when the challenge is made, but the credibility of the challenge. Accordingly, the submission of the plaintiffs therein that older the patent, stronger the firewall was rejected by Rajiv Shakdher, J. by observing as under:

ii. Second, as indicated above, the scheme of the Act does not foreclose the right of the defendants in defence to an infringement action to question the validity of the patent. Section 107 of the Act, expressly confers a right on the defendants to raise, in defence, in an infringement suit, all those grounds on which the patent can be revoked under Section 64 of the very same Act. Therefore, the judgement in Bristol- Myers Squibb Company and Ors vs. J.D. Joshi and CS(COMM) 239/2019 and connected matters Page Signing 24 of 7316:41:19 Date:29.03.2023 2023:DHC:2269 Ors., MANU/DE/1889/2015, if read in context, would demonstrate that it has not emasculated the right of the defendant, as conferred under the Act, to challenge the validity of the patent. The presumption of validity exists only till such time the patent is challenged - a challenge which is credible and no further. In my opinion, if the plaintiffs' argument was to be accepted, then, it would have to be held that the older the patent, the stronger the firewall. Such an interpretation, in my view, would be contrary to the plain words of the Statute."

55. The question before this Court is when can it be said that the defendant has raised a credible challenge to the validity of a patent held by the plaintiff in an infringement action? During the course of the argument it was suggested by counsel that the challenge had to be both strong and credible. Also, the defendant resisting the grant of injunction by challenging the validity of the patent is at this stage required to show that the patent is "vulnerable" and that the challenge raises a "serious substantial question" and a triable issue. Without indulging in an exercise in semantics, the Court when faced with a prayer for grant of injunction and a corresponding plea of the defendant challenging the validity of the CS(COMM) 239/2019 and connected matters Page Signing 31 of 7316:41:19 Date:29.03.2023 2023:DHC:2269 patent itself, must enquire whether the defendant has raised a credible challenge. In other words, that would in the context of pharmaceutical products, invite scrutiny of the order granting patent in the light of Section 3(d) and the grounds set out in Section 64 of the Patents Act 1970. At this stage of course the Court is not expected to examine the challenge in any great detail and arrive at a definite finding on the question of validity. That will have to await the trial. At the present stage of considering the grant of an interim injunction, the defendant has to show that the patent that has been granted is vulnerable to challenge.

(vi) At this stage, the Court is not expected to examine the challenge in detail and arrive at a definite finding on the question of validity of the patent. That will have to await at the time of trial. However, the Court has to be satisfied that a substantial, tenable and credible challenge has been made.

(vii) The plaintiff is not entitled to an injunction, if the patent is recent, its validity has not been established and there is a serious controversy about the validity of the patent."