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2017 Supreme(Del) 823
IN THE HIGH COURT OF DELHI AT NEW DELHI
BADAR DURREZ AHMED & SANJEEV SACHDEVA, JJ.
CIPLA LIMITED – Appellant
Versus
NOVARTIS AG & ANR. – Respondents
FAO(OS) 21 of 2015 & CM Nos.731, 1288, 2090 of 2015
Decided On : 09-03-2017
For the Appellant :Mr. P. Chidambaram, Mr. Abhishek Manu Singhvi and Ms. Prathibha M. Singh, Senior Advocates with Ms. Bitika Sharma, Ms. Namrita Kochhar and Mr. Harshit Saxena
For the Respondent:Mr. Gopal Subramaniam and Mr. CS Vaidyanatham, Senior Advocates with Mr. Hemant Singh, Ms. Mamta Jha, Dr Shilpa Arora, Mr. Talha and Ms. Anusha
The rights of patentees under Section 48 of the Patents Act are not circumscribed by Section 83, and the public interest argument does not outweigh the rights of the patentee in the case of infringement.
Headnote:
Patents Act - Infringement - Section 48, Section 83
Fact of the Case:
The case involved a dispute over the infringement of a patent for the drug 'INDACATEROL' used for chronic obstructive pulmonary disease (COPD). The appellant launched a drug 'UNIBREZ' which led to a lawsuit by the respondents for infringement of their patent. The court granted an injunction restraining the appellant from using, manufacturing, importing, or selling any pharmaceutical products containing 'INDACATEROL' until determination by the competent authority of the pleas raised for seeking a compulsory license.
Finding of the Court:
The court found that the respondents had a prima facie case as the patent was valid, and the balance of convenience favored the respondents. The court held that the rights of the patentees under Section 48 were not circumscribed by Section 83, and the public interest argument did not outweigh the rights of the patentee in the case of infringement.
Issues: The issues involved the working of the patent in India, the relevance of Section 83 in relation to the rights of patentees under Section 48, and the consideration of public interest in granting an injunction.
Ratio Decidendi: The court held that the rights of patentees under Section 48 were not circumscribed by Section 83, and the public interest argument did not outweigh the rights of the patentee in the case of infringement. It was also found that imports could constitute working of the patent in India, and the question of public interest was only one of the factors to be considered in granting an injunction.
Final Decision: The appeal was dismissed, and the injunction granted by the lower court was upheld.
BADAR DURREZ AHMED, J.
1. The present appeal is directed against the judgment and/or order dated 09.01.2015 delivered by a learned Single Judge of this Court in IA 24863/2015 which was an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. That application was filed in CS(OS) 3812/2014 which, in turn, had been instituted by the respondents/plaintiffs. The suit filed by the respondents was one for permanent injunction restraining infringement of patent No. 222346 granted under the Patents Act, 1970 (hereinafter referred to as ‘the said Act’) in favour of the respondent No.1/plaintiff No.1. The suit was also for rendition of accounts/damages, delivery-up etc. The respondent No.1 is a Swiss company and the respondent No.2 is an Indian company. The appellant, of course, is also an Indian company.
2. The entire controversy is with regard to ‘INDACATEROL’ in respect of which the respondent No.1 holds the said patent. The said respondents market the said ‘INDACATEROL’ under the name ‘ONBREZ’. ‘INDACATEROL’ is a bronchodilator and provides symptomatic relief to persons suffering from chronic obstructive pulmonary disease (COPD).
3. The appellant launched its drug ‘UNIBREZ’ in October, 2004. However, a suit was filed by the respondents on 09.01.2015 which was ultimately disposed of on the appellant’s undertaking to change the brand name of the drug from ‘UNIBREZ’ to ‘INDAFLO’. That was an infringement of trade mark action.
4. The respondents do not manufacture ‘INDACATEROL’ in India. In fact, the drug is manufactured by the respondent No.1 in Switzerland and is imported into India and marketed by Lupin pursuant to an agreement dated 22.03.2012.
5. The appellant is aggrieved by the fact that the learned Single Judge has restrained the appellant from, inter alia, using, manufacturing, importing, selling any pharmaceutical products etc. containing ‘INDACATEROL’ or ‘INDACATEROL Maleate’, alone or in combination with any other compound or Active Pharmaceutical Ingredient (API), which may amount to infringement of the respondent No.1’s patent No. 222346. However, this injunction has been granted until the determination by the competent authority of the pleas raised by Cipla for seeking the compulsory licence, if so filed. In case no such application for compulsory licence is filed, the learned Single Judge directed that the injunction would continue during the pendency of the suit. The learned Single Judge also directed that in case the appellant filed such an application and the same was decided in favour of the appellant, it could move an application for modification etc. of the impugned order dated 09.01.2015.
6. The learned counsel for the appellant submitted that by virtue of the impugned judgment and/or order, the appellant cannot market ‘INDACATEROL’ in India. It was also submitted that the respondents do not manufacture ‘INDACATEROL’ (ONBREZ) in India. Only small quantities are imported catering to a negligible number of patients. Thus, according to the appellant, the respondents are not working the patent in India and consequently, they are not entitled to an injunction.
7. It was contended that Section 48 of the said Act describes the rights of patentees. However, it begins with the words “subject to the other provisions contained in this Act”. Referring to the said expression, the learned counsel for the appellant submitted that the said rights of patentees under Section 48 would be subject to other provisions in the Act, including Section 83 of the said Act. Section 48 and Section 83 of the said Act are reproduced herein below:-
“48. Rights of patentees.—Subject to the other provisions contained in this Act and the conditions specified in section 47, a patent granted under this Act shall confer upon the patentee —
(a) where the subject matter of the patent is a product, the exclusive right to
