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IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, J.
FMC Corporation & Anr. - Plaintiffs
Versus
Best Crop Science LLP & Anr. – Defendants
I.A. 2084 of 2021, 15352 of 2019 in CS(COMM) 69 of 2021, 611 of 2019
Decided On : 07-07-2021
Patents Act, 1970 - Section 11A and 64(1)(a) - Code of Civil Procedure, 1908 - Order XXXIX Rules 1 and 2 - Publication of applications - Infringement of patents right - Whether a patent discloses a particular invention or moiety which becomes, therefore, obvious from patent - Plaintiff asserts its product patent IN 201307 (“IN’307”,) and its process patent IN 213332 (“IN’332”), which relate to the product Chlorantraniliprole (“CTPR”) and process for the preparation thereof - Plaintiff alleges that defendants are proposing to infringe suit patents by manufacturing and releasing, in the market, their own CTPR products, even while suit patents continue to be alive and without obtaining any license from plaintiff. Injunction, against defendants from doing so has, therefore, been sought in the plaints.
Finding of the court : plaintiff is held entitled to protection from infringement in respect of both the suit patents IN’307 and IN’332 - It is not necessary, at this interlocutory stage, to analyse, further involved process by which, by effecting select substitutions on claims in WO’115, BCS asserts that it has arrived at “key intermediates” for CTPR. One may just reproduce, in this regard diagrammatic representation of manner in which such “disclosure” is alleged, by BCS, to have taken place in WO’115, as contained in the written submissions filed by BCS - Even on a comprehensive reading of the said assertions in the pleadings of BCS, it is not possible to hold that CTPR was disclosed in WO’115, or that its validity has been rendered vulnerable as a result thereof - Merely “residuary” submissions. Without citing judicial authorities in this regard, it is well settled that, in intellectual property infringement cases, especially in patent infringement claims and, most specifically, where infringement case of a pharmaceutical/agrochemical patent, public interest dictates injuncting perpetuation of an invention which is, prima facie, infringing in nature. Damages, it is well settled, are no panacea in such a case - From teachings in genus patent, person skilled in the art must be in a position to arrive, without unduly straining his imaginative and creative faculties, at specie patent, in order for specie patent to be invalidated on the ground of obviousness. Element of “directness” must be there. Choice which person skilled in art would make, by way of substitutions on Markush moiety or otherwise, must be apparent from the teachings in the genus patent, in order for the specie patent to be treated as “obvious”. A “trial and error” approach would be antithetical to any suggestion of “obviousness”.
Result : IA and CS (Comm) allowed
JUDGMENT :
1. This judgment disposes of IA 15352/2019 in CS(Comm) 611/2019 and IA 2084/2021 in CS(Comm) 69/2021. The captioned application has, in each case, been filed by the common plaintiff FMC Corporation (who would be referred to, in this judgment, as “the plaintiff”), against the defendant Natco Pharma Ltd in CS(Comm) 611/2019 and against the defendant Best Crop Science LLP in CS (Comm)69/2021, under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC).
2. In each case, the plaintiff asserts its product patent IN 201307 (“IN’307”, in short) and its process patent IN 213332 (“IN’332”, in short), which relate to the product Chlorantraniliprole (also known as “CTPR”) and the process for the preparation thereof. The plaintiff alleges that the defendants are proposing to infringe the suit patents by manufacturing and releasing, in the market, their own CTPR products, even while the suit patents continue to be alive and without obtaining any license from the plaintiff. Injunction, against the defendants from doing so has, therefore, been sought in the plaints.
3. The applications under Order XXXIX of the CPC, which this judgment disposes of, seeks interim injunction against the infringement of the suit patents by the defendants.
4. For ease of reference, discussion in this judgment, would pertain principally to the facts relevant to CS (Comm) 611/2019 and IA 15352/2019, preferred therein. As such, the expression “defendant” would refer to the defendant in CS (Comm) 611/2019, i.e. Natco Pharma Ltd.
A. Re. IN’307
Facts
5. The plaintiff sets up the following case in the plaint:
“11A. Publication of applications –
(1) Save as otherwise provided, no application for patent shall ordinarily be open to the public for such period as may be prescribed.
(2) The applicant may, in the prescribed manner, request the Controller to publish his application at any time before the expiry of the period prescribed under sub- section
(1) and subject to the provisions of sub- section (3), the Controller shall publish such application as soon as possible.
(3) Every application for patent shall, on the expiry of the period specified under sub- section (1), be published, except in cases where the application –
(a) in which secrecy direction is imposed under section 35; or
(b) has been abandoned under sub- section (1) of section 9; or
(c) has been withdrawn three months prior to the period specified under sub- section (1).”
“Prescribed” is defined, under Section 2(u) as, in cases other than those relating to proceedings before the High Court or the IPAB, “prescribed by rules made under this Act”.
Rule 24 of the Patents Rules, 2003, stipulates the period, under Section 11A (1) as 18 months from the date of filing of the application or the priority date of the application, whichever is earlier.
Rule 24A requires the applicant to file a request for publication, under Section 11A(2) in Form 9, of the Patents Act, 1970 was declared as 30th September, 2005, and priority dates, Section 7 (1) of the Patents Act requires every application for a patent to be only for one invention. Subsections (1A) and (1B) of Section 7 read thus:
“(1A) Every international application under the Patent Cooperation Treaty for a patent, as may be filed designating India shall be deemed to be an application under this Act, if a corresponding application has also been filed before the Controller in India.
(1B) The filing date of an application referred to in sub- section (1A) and its complete specification processed by the patent office as designated office or elected office shall be the International filing date accorded under the Patent Cooperation Treaty.”
“Priority date” is defined, in Section 2(w) as having
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