Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2019 Supreme(SC) 26

SUPREME COURT OF INDIA
ROHINTON FALI NARIMAN, NAVIN SINHA, JJ.
Monsanto Technology LLC Thru the Authorised Representative Ms. Natalia Voruz & Others - Appellants
Versus
Nuziveedu Seeds Ltd. Thru the Director & Others - Respondents
Civil Appeal Nos. 4616-4617 of 2018
With
Federation of Seed Industry of India (FSII) - Appellant
Versus
Nuziveedu Seeds Ltd. & Others - Respondents
Civil Appeal No. 188 of 2019 (Arising out of SLP(C) No. 19411 of 2018)
Nuziveedu Seeds Ltd. & Ors. - Appellants
Versus
Monsanto Technology LLC & Others - Respondents
Civil Appeal Nos. 1891-90 of 2019 (Arising out of SLP(C) Nos. 16479-16480 of 2018)
All India Kisan Sabha - Appellant
Versus
Monsanto Technology LLC & Others - Respondents
Civil Appeal Nos. 191-192 of 2019 (Arising out of SLP(C) Nos. 19409-19410 of 2018)
Decided On : 08-01-2019

Advocates Appeared:
Mr. Neeraj Kishan Kaul, Sr. Adv. Mr. Devanshu Sajlan, Adv. Mr. Deepak Joshi, Adv. Mr. Akash lamba, Adv. Ms. Hansa Kaul, Adv. Mr. E. C. Agrawala, AOR Mr. Pravin Anand, Adv. Mr. R.N. Karanjawala, Adv. Ms. Ruby Singh Ahuja, Adv. Ms. Neeti Wilson, Adv. Mr. Shrawan Chopra, Adv. Mr. Vibhab, Adv. Ms. Udita, Adv. Mr. Sanjeet Ranjan, Adv. Mrs. Manik Karanjawala, Adv. For M/s. Karanjawala & Co., AOR Mr. Arvind P. Datar, Sr. Adv. Mr. K.V. Viswanathan, Sr. Adv. Mr. Shyam Divan, Sr. Adv. Mr. Jayant Bhushan, Sr. Adv. Mr. Chaitanya D. Mehta, Adv. Ms. Diya Kapur, Adv. Mr. Essenese Obhan, Adv. Mr. Abhishek Saket, Adv. Mr. Rishabh Sharma, Adv. Ms. Sugandha Batra, Adv. Mr. Raghav Anand, Adv. Ms. Neha Khanduri, Adv. Ms. Vrinda Bhandari, Adv. Mr. Feroz Ali, Adv. Ms. Liz Mathew, AOR Mr. Krishnan Venugopal, Sr. Adv. Mr. Jitendra Kumar, AOR Mr. Ram Krishna, Adv. Mr. Anuj Tiwari, Adv. Mr. Ritwik Sahay, Adv. Mr. Gunjan Singh, Adv. Ms. Neiteo Koza, Adv. Mr. Satya Mitra, AOR Mr. Nachiketa Joshi, AOR Mr. Pranet Pranav, Adv. Ms. Ankita Chaudhary, Adv. Mr. Santosh Kumar, Adv. Mr. Aniket Seth, Adv. Mr. Neeraj Kishan Kaul, Sr. Adv. Mr. Bommineni Vivekananda, Adv. Mr. Divyanshu Srivastava, Adv. Mr. Viren Sibal, Adv. Mr. Varun Mathur, Adv. Mr. Amar Dave, Adv. Mr. P.S. Sudheer, AOR Mr. Rishi Maheshwari, Adv. Ms. Anne Mathew, Adv. Mr. Bharat Sood, Adv. Ms. Shruti Jose, Adv. Mr. Senthil Jagadeesan, AOR Mr. Prashant Bhushan, AOR Ms. Lekha G.V., AOR Anindita Mitra, AOR

IMPORTANT POINT
Suit involving complicated issues requiring technological and expert evidence cannot be disposed of in a summary manner by relying on documents only, extracted from the public domain.

Headnote:Patent Act – Section 64 – Revocation of patent based on counter claim in a suit – Summary adjudication not permissible – Section 9, Code of Civil Procedure, 1908 – Could be done only on admission under Order XII Rule 6 or when parties are not in issue under Order XVI Rule 1, CPC – Suit involving complicated issues requiring technological and expert evidence – Cannot be disposed of in a summary manner by relying on documents only, extracted from the public domain. (Para 23)
       (2010) 10 SCC 141 – Relied upon
       Facts of the case:
       The appellants/plaintiffs in Civil Appeal Nos. 4616-4617 of 2018 instituted Civil Suit (Comm) No. 132 of 2016 seeking permanent injunction against the defendants from using the trademark “BOLGARD” and “BOLGARD II” brand cotton technology, violating the registered patent no. 214436 of the plaintiffs, and also to further restrain the defendants from selling and or using seeds/hybrid seeds bearing the patented technology, infringing the registered patent of the plaintiffs, along with rendition of accounts.
       The Single Judge of the High Court ordered that during the pendency of the suit, the parties shall remain bound by their respective obligations under the sub-licence agreement and that the licence fee/trait value payable by the defendant shall be governed by the laws in force. The Single Judge simultaneously only issued notice on the counter claim no.51 of 2016. Prima facie opining that the termination of the sub-licence agreement by the plaintiffs on 14.11.2015 appeared unjustified in view of the statutory price restrictions, the termination was held not to be of any consequence.
       The Division Bench dismissed the plaintiffs’ appeal.
       Findi g of the Court;
       The Division Bench ought to have confined itself to examination of the validity of the order of injunction granted by the learned Single Judge only.
       Result: Appeals disposed of.

JUDGMENT :

Navin Sinha, J.

Leave granted.

2. The appellants/plaintiffs in Civil Appeal Nos. 4616-4617 of 2018 instituted Civil Suit (Comm) No. 132 of 2016 seeking permanent injunction against the defendants from using the trademark “BOLGARD” and “BOLGARD II” brand cotton technology, violating the registered patent no. 214436 of the plaintiffs, and also to further restrain the defendants from selling and or using seeds/hybrid seeds bearing the patented technology, infringing the registered patent of the plaintiffs, along with rendition of accounts. The parties shall, for convenience, be referred to by their position in the original suit.

3. The plaintiffs pursuant to their patent rights had entered into a sub-licence agreement dated 21.02.2004 with the defendants for an initial period of ten years. The agreement entitled the defendants to develop “Genetically Modified Hybrid Cotton Planting Seeds” with help of the plaintiffs’ technology and to commercially exploit the same subject to the limitations prescribed in the agreement. The agreement also provided for payment of licence fee/trait value by the defendants, for use of the plaintiffs’ patented technology. The agreement after extension was ultimately terminated by the plaintiffs on 14.11.2015 due to disputes regarding payment of licence fee/trait value in view of subsequent price control regime introduced by the State, and to which the defendants required adherence by the plaintiffs. The plaintiffs filed an application for injunction under Order 39, Rule 1 and 2 of the Code of Civil Procedure (hereinafter referred to as ‘the Code’), to restrain the defendants from using their registered trade mark in violation of the registered patent during the pendency of the suit in view of the termination of the agreement.

4. The defendants in their written statement inter alia contended that their rights were protected under the Protection of Plant Varieties and Farmers’ Rights Act, 2001 (hereinafter referred to as ‘the PPVFR Act’). The suit patent was bad because claims 124 were “process claims” concerning genetic engineering or biotechnology method to insert “Nucleic Acid Sequence” (NAS) into a plant cell as in claim 25-27 practiced in laboratory conditions, unlike the complete biological process adopted by the defendants. The NAS was a chemical composition incapable of reproducing itself and was thus not a micro-organism. Only on insertion into a plant, a living organism, it imparts Bt.trait (insect resistance) to the living organism. The defendants also filed a counter claim no.51 of 2016 seeking revocation of the patent under Section 64 of the Act, as being in violation of Section 3(j) of the Patents Act (hereinafter referred to as “the Act”) in respect of plants and seeds that contained DNA sequences, denying any infringement.

5. The learned Single Judge on 28.03.2017, while deciding the plaintiffs’ application for injunction, observed that the issues arising in the suit necessarily required formal proof, particularly expert opinion, which in complicated matters like that of patent were crucial for ascertaining the breadth of the monopoly granted by the specifications of a patent claim. The nature and extent of the patent claim was more properly a matter to be examined after pleadings were complete and evidence adduced on the issues arising, which did not merit comments at the stage of interim injunction. Considering the existing patent registered under Section 48 of the Act, it was ordered that during the pendency of the suit, the parties shall remain bound by their respective obligations under the sub-licence agreement and that the licence fee/trait value payable by the defendant shall be governed by the laws in force. The learned Single Judge simultaneously only issued notice on the counter claim no.51 of 2016. The order of injunction dated 28.03.2017, therefore did not deal with or consider the counter claim. It was prima facie observed that the defendants having had the advantage o

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2019 Supreme(SC) 26

IMPORTANT POINTSuit involving complicated issues requiring technological and expert evidence cannot be disposed of in a summary manner by relying on documents only, extracted from the public domain.

Cases Referred (1)

IMPORTANT POINT
Suit involving complicated issues requiring technological and expert evidence cannot be disposed of in a summary manner by relying on documents only, extracted from the public domain.