The main legal point established in the judgment is that the relief claimed by the defendant in the Hyderabad suit, of declaration of invalidity of the junior patent, is beyond the subject jurisdiction of the City Civil Court, Hyderabad and can be granted only by the High Court. The judgment also emphasizes the abuse of the process of law and Court by the defendant in filing the suit in Hyderabad.

JUDGMENT :

Rajiv Sahai Endlaw, J.

This judgment adjudicates IA No.9768/2019 of the defendant under Section 10 of the Code of Civil Procedure, 1908 (CPC) and the preliminary issue as under:

"(II) Whether the proceedings in the present suit are liable to be stayed under Section 10 of the CPC owing to the suit filed by the defendant against the plaintiffs in the Courts at Hyderabad?

OPD"

framed in the suit on 7th November, 2019, when after hearing the counsels, orders were reserved.

2. The three plaintiffs, namely (i) Bristol-Myers Squibb Holdings Ireland Unlimited Company, (ii) Bristol-Myers Squibb India Private Ltd. and (iii) Pfizer Limited have instituted this suit against the sole defendant, for permanent injunction to restrain the defendant from infringing Indian Patent No.IN247381 (hereinafter referred to as "junior patent") having International Non-Proprietary Name "APIXABAN", granted to the plaintiff No.1 on 4th April, 2011, including by selling "APIGAT" and for ancillary reliefs. The plaintiffs, in the plaint have disclosed (a) that the plaintiff No.1, on 11th November, 2010, was also granted Indian Patent No.IN243917 (hereinafter referred to as "senior patent") having International Non-Proprietary Name Nitrogen Containing Heterobicycles As Factor Xa Inhibitors; (b) that the said senior patent does not specifically disclose "APIXABAN", subject matter of the junior patent but is generically covered therein and therefore manufacture by the defendant of "APIXABAN" constitutes infringement of the senior patent as well; and, (c) that the plaintiffs reserved their right to sue the defendant with respect to the senior patent.

3. The suit, instituted on 4th July, 2019, came up first before this Court on 5th July, 2019 when the counsel for the defendant appeared on caveat. The suit was entertained and summons thereof ordered to be issued.

4. It is inter alia the case of the defendant in its written statement, as also in the application under Section 10 of the CPC,:

(i) that the defendant filed a civil suit against the plaintiffs before the City Civil Court at Hyderabad praying for the following reliefs:

"(a) Declaration holding that Apixaban is covered by written description of IN 243917 and is therefore in public domain and manufacture of Apixaban by a member of the public is justified.

(b) Permanent injunction restraining Patentee (Bristol Myers) from threatening and hampering the business of Natco with respect to Apixaban."

(ii) that the defendant also filed an application for interim relief in its suit at Hyderabad, to restrain the plaintiffs from threatening the defendant and from taking any legal action against the defendant in respect of the senior patent and the junior patent;

(iii) that the said suit filed by the defendant was heard by the City Civil Court at Hyderabad on 28th June, 2019, when summons thereof and notice of the application for interim relief therein were issued for 8th July, 2019;

(iv) that the plaintiffs were served with the said summons/notice on 1st July, 2019;

(v) that the plaintiffs, having full knowledge of the prior suit filed by the defendant in Hyderabad, immediately proceeded to file the present suit in this Court, to avoid the hearing before the City Civil Court, Hyderabad;

(vi) that the plaintiffs have entered appearance in the Hyderabad suit and filed application under Order VII Rule 11 of the CPC therein;

(vii) that at the heart of and critical to determination of issues in this suit as well as in the Hyderabad suit, are the contents and scope of disclosure of the senior patent and contents and scope of disclosure and claims contained in the junior patent;

(viii) that the reliefs sought by defendant in the Hyderabad suit require determination, whether the senior patent discloses "APIXABAN";

(ix) that if the declaration sought by the defendant in Hyderabad suit is ordered, then any action of defendant of making and selling "APIXABAN" would not be an infringement of the junior patent, subject matter of this suit