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9. The learned Judge had also observed that since iron carbohydrate complexes were already known, the invention forming part of IN'536 resided in the specified process alone. This is evident from the following observations as appearing in paragraph 71 of the impugned decision:

―71. As rightly contended by the Defendants, there is an admission by Vifor that use of iron carbohydrate complexes is known and a water-soluble iron (III) hydroxide sucrose complex is a frequently and successfully used preparation. It is stated that the problem to be solved by the present invention is to provide an iron preparation which is especially to be applied parenterally and can be easily sterilized as the known parenterally applicable preparations on the basis of sucrose and dextran were only stable at temperatures up to 100oC, which made sterilization difficult. It is categorically asseverated in the complete specification that present invention is a process for producing iron carbohydrate complexes wherein one or more ‗maltodextrins' are oxidized in an aqueous solution at an alkaline ‗pH' using ‗aqueous hypochlorite solution' and further [2014] EWHC 3857 (Pat) 970 F.2d 834 566 F.3d 1282 that when one maltodextrin is applied, the DE value is between 5 and 20 and when mixture of several maltodextrin is applied, the DE value of the mixture lies between 5 and 20 and the DE value of each individual maltodextrin contained in the mixture lies between 2 and 40. Given the admission of Vifor in the complete specification that iron carbohydrate complexes were already known, the only prima facie conclusion that this Court can reach is that the purported invention resides in preparing iron carbohydrate complexes with maltodextrin as the starting material and/or the step of oxidation using the specified oxidizing agent i.e. aqueous hypochlorite solution. In fact, what Vifor overlooks in making the submission that the process is inconsequential, is that the characteristic properties that it claims in FCM, distinguished from the prior art, are a direct result of the process used by Vifor, an admission that it makes during the prosecution of the patent application and is glaringly evident in the complete specification. Therefore, the scope of Claim 1 of IN'536 is limited to a product obtained through a specific process feature identified therein and cannot cover any and all processes that may be used by a third party to produce FCM and it is thus held that Claim 1 is a product-by-process claim and not a pure product claim."

18. In order to appreciate the submissions which were addressed in this respect, we also reproduce the claims as appearing on the record hereinbelow:

―WE CLAIM
1. Water soluble iron carbohydrate complexes obtainable from an aqueous solution of iron (111) salt and an aqueous solution of the oxidation product of one or more maltrodextrins using an aqueous hypochlorite solution at a pH-value within the alkaline range, where, when one maltodextrin is applied, its dextrose equivalent lies between 5 and 20, and when a mixture of several maltodextrins is applied, the dextrose equivalent of the mixture lies between 5 and 20 and the dextrose equivalent of each individual maltodextrin contained in the mixture lies between 2 and 40, wherein the obtained iron complexes have an average molecular weight of 80 kDa to 400 kDa.

33. We were informed that the appellants had placed voluminous technical literature before the learned Single Judge and which had established that maltodextrins could have a DE value upto 96. It was submitted that Claim 1 of the suit patent itself had spoken of maltodextrins of upto a DE value of 40 being possible. It was in the aforesaid backdrop that Mr. Kaul contended that the learned Judge has clearly erred in proceeding on the premise that maltodextrins with a DE value range of 2-20 was an essential facet of the process of manufacturing FCM. The findings in this respect were additionally assailed on the basis of the U.S. Markman Hearing order in which maltodextrins were accepted as being unbound by a DE value limitation. The relevant extracts of the aforesaid order are reproduced hereinbelow:

                           Parent Patents                                       Divisional Patents

         IN 221536              EP 1554315       US7612109      EP227820     US201403711        US20160215071


      Water soluble             Water soluble   A       water   Water        An iron          An iron
      iron                      iron            soluble iron    soluble      Carboxypolym     Carboxypolymaltose
      carbohydrate              carbohydrate    carbohydrate    iron(III)-   altose complex   complex of formula:
      complexes                 complex         complex         carbohydr    of formula:
      obtainable                having      a   having      a   ate
      from          an          weight          weight          complexes
                                                                                              [FeOx(OH)y(H2O)x
      aqueous                   average         average         on the
                                                                             [Fe0x(OH)y(H     ]n[
      solution of iron          molecular       molecular       basis of
                                                                             20)zin[{c
      III salt and an           weight (Mw)     weight (Mw)     the
                                                                             6H1005).(c6H {C6H10O5)(C6H12
      aqueous                   of 80 kDa to    of 80,000 to    oxidation
                                                                             1207) } ilk O
      solution of the           400      kDa    400,000,        products
                                                                             wherein    the
      oxidation                 obtainable      comprising      of                          7)}]Ik
                                                                             values     for
      product of one            from       an   the reaction    maltodexti


                        USPTO







       or        more        aqueous             product of:       ns,         variables x, y,    Wherein the values
      maltrodextrins        solution     of                       wherein     z, n, m, 1 and k   for variables x, y, z,
      using         an      iron (III) salts    (a)         an    the iron    are such that      n, m, 1 and k are
      aqueous               and          an     aqueous           (III)       said        iron   such that said iron
      hypochlorite          aqueous             solution of an    carbohydr   carboxypolym
      solution at a         solution     of     iron (III) salt   ate         altose         Carboxypolymaltose
      pH-value              the oxidation       and               complexes   complex has    complex has an
      within       the      product      of                       have a      an      averageaverage molecular
                                                (b)        an                                weight in the range
      alkaline range        one or more                           weight      molecular
                                                aqueous                                      of from 80 kDa to
      where     when        maltodextrins                         average     weight in the
                                                solution   of                                about 400 kDa and
      one                   using        an                       molecular   range of from
                                                the oxidation                                an iron content in the
      maltodextrin is       aqueous                               weight      about
                                                product of                                   range of from about
      applied       its     hypochlorite                          Mw of 80
      dextrose              solution at a                         KDa to      80 kDa to 24 to about 32% by
                                                (i) at least
      equivalent lies       pH-value                              400 kDa.    about 400 kDa weight.
                                                one
      between 5 and         within      the                                   and an iron
                                                maltodextrin
      20 and when a         alkaline                                          content in the
                                                and
      mixture       of      range, where,                                     range of from
      several               when        one     (ii)         an               about 24 to
      maltodextrins maltodextrin        aqueous                       about 32%
      is applied the        is applied, its     hypochlorite
                                                                              by weight.
      mixture     lies      dextrose            solution at an
      between 5 and         equivalent          alkaline pH,
      20 and the            lies between        wherein,
      dextrose              5 and 20, and       when       one
      equivalent of         when           a    maltodextrin
      each individual       mixture      of     is present, the
      maltodextrin          several             maltodextrin
      contained      in     maltodextrins       has           a
      the     mixture       is applied, the     dextrose
      lies between 2        dextrose            equivalent of
      and 40 wherein        equivalent of       between       5
      the    obtained       the mixture         and 20, and
      iron complexes        lies between        wherein,
      have          an      5 and 20 and
      average               the dextrose        When          a
      molecular             equivalent of       mixture      of
      weight of 80          each                more      than
      kDa to 400            individual          one
      kDa.                  maltodextrin maltodextrin
                            contained in        is present, the
                            the mixture         dextrose
                            lies between        equivalent of
                            2 and 40.           each
                                                individual
                                                maltodextrin
                                                is between 2
                                                and 40, and







                                                 the dextrose
                                                equivalent of
                                                the mixture is
                                                between      5
                                                and 20.