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2019 Supreme(Del) 1007
IN THE HIGH COURT OF DELHI AT NEW DELHI
SURESH KUMAR KAIT, J.
Onyx Therapeutics Inc - Appellant
Versus
Union Of India & Ors - Respondent
Writ Petition (Civil) No. 5022 of 2017; Civil Miscellaneous Application No. 21659 of 2017
Decided on : 22-02-2019
Advocate Appeared:
Anil Dutt, Adv., Gunjan Hans, Adv., Manish Mohan, Adv., Manisha Saroha, Adv., J. Sai Deepak, Adv., Afzal B Khan, Adv., Eashan Ghosh, Adv.
The discretionary power of the Controller of Patents to allow cross-examination under Section 79 of the Patents Act and the importance of cross-examination in cases where the credibility of witnesses is in question.
Headnote:
Patents Act - Cross-Examination - Section 25(2) - Summary of Acts and Sections: The court discussed the provisions of Section 25(2) of the Patents Act, 1970, and the rules framed thereunder, particularly Rules 55A-62 and 137 of the Patent Rules, 2003. The court highlighted the discretionary power of the Controller of Patents to allow cross-examination under Section 79 of the Act and emphasized the importance of cross-examination in cases where the credibility of witnesses is in question.
Fact of the Case:
The petitioner sought to quash impugned orders and restore an earlier order to enable cross-examination of expert witnesses in a post-grant opposition under Section 25(2) of the Patents Act. The petitioner, a US-based company, challenged the validity of its granted Indian Patent No. 255964 in response to a post-grant opposition initiated by a company registered in India (respondent No. 3). The respondent No. 2, an officer under the Office of the Controller General of Patents, issued impugned orders denying the petitioner's request for cross-examination.
Finding of the Court:
The court found that the petitioner had consistently challenged the credibility of the expert witnesses and emphasized the importance of cross-examination in such technical cases. The court held that the respondent No. 2's reversal of its decision to allow cross-examination was without jurisdiction and a manifest error of law. The court set aside the impugned orders and restored an earlier order to allow cross-examination, subject to the petitioner filing affidavits of experts to controvert the opinion of the respondent No. 3's expert witnesses.
Issues: The main issue was whether the petitioner had the right to cross-examine the expert witnesses of the respondent No. 3 in a post-grant opposition under the Patents Act, 1970, and the rules framed thereunder. The court also addressed the discretionary power of the Controller of Patents to allow cross-examination under Section 79 of the Act.
Ratio Decidendi: The court held that in cases where the credibility of witnesses is in question or in doubt, the denial of an opportunity for cross-examination would amount to a violation of principles of natural justice and vitiate the entire proceeding. The court emphasized the importance of cross-examination in technical cases and the discretionary power of the Controller of Patents to allow cross-examination under Section 79 of the Act.
Final Decision: The court allowed the writ petition, set aside the impugned orders, and restored an earlier order to allow cross-examination, subject to the petitioner filing affidavits of experts to controvert the opinion of the respondent No. 3's expert witnesses. The court also directed the respondent No. 2 to give the respondent No. 3 the right to cross-examine the expert witnesses of the petitioner.
Suresh Kumar Kait, J.
The present petition is preferred for quashing the impugned orders dated 12.05.2017 and 11.04.2017 passed by the respondent No. 2 and restore the order dated April 10, 2017. Consequently, enable the petitioner to cross-examine Dr. Surajit Sinha and Dr. Prachi Tiwari prior to a final hearing on merits in the Section 25(2), Patents Act proceeding initiated by the respondent No. 3 against Patent No. 255964.
2. Further seeks direction thereby directing the respondent No. 2 to pass an order on the petitioner's objections/reply dated 05.06.2015 to taking on record the additional testimony of Dr. Prachi Tiwari as filed by the Respondent No. 3 on 17.04.2015, prior to any final hearing on merits in the Section 25(2), Patents Act proceeding initiated by the Respondent No. 3 against Patent No. 255964.
3. The brief facts of this case are that the petitioner is a company incorporated under the laws of the United States, having its registered office now at One Amgen Center Drive, Thousand Oaks, California, 91320-1799, USA and engaged in the research, development and commercialization of novel therapeutics that target protein degradation pathways for cancer and autoimmune diseases. The respondent No. 2 is an officer under the Office of the Controller General of Patents, Designs and Trade Marks, DIPP, acting on behalf of said Controller General, with respect to granting patents in the Delhi branch of the Indian Patent Office. Respondent No. 3, is a non-government company registered in India and has initiated a post-grant opposition under Section 25(2) of the Patents Act, to invalidate the granted Indian Patent No. 255964, issued to Proteolix Inc., which was subsequently acquired by the petitioner herein. As per the company master data available on the website of the Ministry of Corporate Affairs, the registered address of the respondent No. 3 is in Bhikaji Cama Place, New Delhi. Proteolix Inc. at 225 Gateway Boulevard, South San Francisco, CA 94080 (US), filed an international application under the Patent Cooperative Treaty, bearing No. PCT/US05/012740 dated 14.04.2005 and pursuant thereto, moved an application under Section 7(1A) of the Patents Act on 27 September 2006 bearing No. 5644/DELNP/2006, seeking a patent in India based on aforesaid international application. The said patent application was titled “Compounds for enzyme inhibition” and as the abstract indicates, the invention claimed therein are expected to display therapeutic utilities, including anti-inflammatory properties and inhibition of cell proliferation (“Patent Application”). Said Protoelix Inc. was subsequently acquired by the petitioner herein. The said Patent Application was duly examined under the Patents Act and the office of the Respondent No. 2 issued a first examination report (“FER”) under Section 14 of the Patents Act on 13.10.2011, listing out several objections against the grant of a patent on the Patent Application. All said objections were replied to and addressed vide response dated 10.10.2012. The respondent No. 2, after having concluded that the Patent Application has complied with all requirements of the Patents Act, proceeded to grant a patent bearing no. 255964 (“Petitioner's Patent), on 09.04.2013, which grant was also published under Section 43 of the Patents Act, on 12.04.2017. Petitioner's Patent is annexed herewith as Annexure P-4 (colly).
4. It is further case of the petitioner is that on 07.04.2014, the petitioner received a copy of the post-grant opposition under Section 25(2) of the Patents Act read with Rule 55A of the Patents Rules, 2003 as filed by the respondent No. 3 (“Opposition”), which relied upon, inter alia, an expert affidavit from Dr. Surajit Sinha dated 31.03.2014. Dr. Surajit Sinha's opinion is that the petitioner's Patent No. 255964 is invalid. The contents of Dr. Surajit Sinha's affidavit are strongly relied upon in the opposition. Since the opposition documents are voluminous, after seeking an extensi
