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High Court of Judicature at Madras
THE HONOURABLE MRS. JUSTICE R. BANUMATHI & THE HONOURABLE MS. JUSTICE R. MALA
Matrix Laboratories limited
Versus
F. Hoffman -La Roche Ltd., rep.by its Constituted Attorney Sujatha Subramaniam & Another
O.S.A.NO.365 of 2011
Decided On :Decided on : 01-12-2011
Patent Infringement - Jurisdiction - Patents Act - Summary of Acts and Sections: Section 104, Section 25(2), Section 2(1)(e), Section 2(4), Section 134, Section 62(1), Section 62(2), Section 48, Section 47, Section 49, Section 107A, Section 107, Clause 12 of the Letters Patent - The judgment discusses the jurisdiction of the court to entertain a Patent Infringement suit and the revocation of leave granted in the matter of Patent No.196774 - Erlotinib Hydrochloride. The court analyzed the provisions of the Patents Act, including the definition of 'District Court', the jurisdiction of the High Court, and the filing of revocation petitions before the Intellectual Property Appellate Board (IPA Board). The court considered the cause of action, the statements made in the revocation petition, and the conduct of clinical trials by the defendant, and concluded that no cause of action, much less a substantial or integral part of cause of action, had arisen in Chennai. The court set aside the order of the learned single Judge and allowed the appeal, granting the respondents/plaintiffs the liberty to move the appropriate Court.
Fact of the Case:
The respondents, multinational Pharmaceutical Companies, filed a suit for permanent injunction to restrain the appellant, a Pharmaceutical Company, from infringing their patent for Erlotinib Hydrochloride. The appellant filed a revocation petition before the Intellectual Property Appellate Board (IPA Board), Chennai, and sought to revoke the leave granted to the respondents under Clause 12 of the Letters Patent. The learned single Judge held that a part of the cause of action had arisen in Chennai, and declined to revoke the leave, directing for continuation of the interim injunction earlier granted.
Finding of the Court:
The court found that no cause of action, much less a substantial or integral part of cause of action, had arisen in Chennai. The court set aside the order of the learned single Judge and allowed the appeal, granting the respondents/plaintiffs the liberty to move the appropriate Court.
Issues: The issues included the jurisdiction of the court to entertain a Patent Infringement suit, the revocation of leave granted, and the cause of action arising in Chennai.
Ratio Decidendi: The court analyzed the provisions of the Patents Act, including the definition of 'District Court', the jurisdiction of the High Court, and the filing of revocation petitions before the Intellectual Property Appellate Board (IPA Board). The court considered the cause of action, the statements made in the revocation petition, and the conduct of clinical trials by the defendant, and concluded that no cause of action, much less a substantial or integral part of cause of action, had arisen in Chennai.
Final Decision: The court set aside the order of the learned single Judge and allowed the appeal, granting the respondents/plaintiffs the liberty to move the appropriate Court.
R.BANUMATHI, J. & R. MALA, J.
1. Whether this Court has jurisdiction to entertain Patent Infringement suit in the matter of Patent No.196774 - Erlotinib Hydrochloride and whether learned single Judge was right in refusing to revoke the leave granted in Application No.5166 of 2010 in C.S.No.801 of 2010 are the points falling for consideration in this appeal arising out of the Order made in A.No.5529 of 2010.
2. Briefly stated case of respondents/plaintiffs is:-
Respondents are two multi-national Pharmaceutical Companies with Office outside India. Appellant is a Pharmaceutical Company having its office at Secunderabad. Pfizer Products, Inc. had applied for grant of a patent in respect of the CP-358, 774 compound, also known as Erlotinib Hydrochloride and its process vide Application No.537/DEL/1996 on 13.3.1996. Subsequently, Pfizer Inc. assigned their entire right in and to the above patent application to Pfizer Products Inc., who in turn has assigned one half share to respondent No.2. The Indian Patent No.196774 was granted to the respondent No.2 and Pfizer Products. The Controller vide his covering letter dated 6.7.2007 noted that the grant of Patent has been recorded in the Register of patents on 6.7.2007. The Suit Patent Application No.196774 was published in the Official Gazette in March 2005 to enable any person to oppose the Suit Patent Application before the grant of Patent. The said Patent Application No.196774 was found in order for grant on 23.2.2007. Thereafter, Natco Pharma Limited filed a pre-grant opposition challenging 2nd respondents patent application on 10.4.2007. By an order dated 4.7.2007, Indian Patent Office rejected the pre-grant opposition filed by Natco Pharma Limited. On 6.7.2007, the Controller of Patents issued a patent certificate for the compound "A novel (6,7 - bis (2-methoxyethoxy) quinazolin - 4 - y1)- (3-ethynylphenyl) amine hydrochloride compound" (Erlotinib Hydrochloride) bearing Patent No.196774 dating back to 23.2.2007, which was when the patent was originally found in order for grant. The respondents further averred that the suit patent bearing No.196774 has not been subjected to any post-grant opposition under Section 25(2) of the Patents Act before the Indian Patent Office. The 2nd respondent is the joint owner of Indian Patent No.196774 along with Pfizer Products and 1st respondent is the exclusive licensee of the suit patent.
3. Further case of respondents is that Suit Patent No.196774, which relates to the Compound Erlotinib Hydrochloride, has been widely acknowledged by various International bodies to have positive effects towards treatment of lung cancer and pancreatic cancer. The same has been marketed by the 1st respondent in the name of TARCEVA in several countries including India for several years following extensive research activities and clinical trials. The appellant/defendant has filed revocation petition dated 30.4.2010 before the Intellectual Property Appellate Board (in short, "IPA Board"), Chennai, wherein the appellant had expressed its intention to commercially make/use/sell/ distribute/market Erlotinib Hydrochloride, the very compound that is subject matter of the suit patent. It is further alleged that for the reason the appellant has been conducting clinical trial and/or study of their drugs in Lotus Laboratory Pvt. Ltd., Chennai and the respondents apprehended that the appellant threatens to infringe the patent of the respondents. Appellants wilful plans to infringe respondents patent for its own commercial benefits would seriously affect the statutory rights of the respondents. Hence, the respondents have filed the suit for permanent injunction to restrain the appellant, their employers/servants/agents from launching making, selling, distributing, advertising, exporting, importing, offering for sale and in any other manner directly or indirectly deal in any pharmaceutical or any chemical compound that infringes the subject matter of Indian Patent N
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