Latest Patent Cases in 2021 – Part 2

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Merck Sharp And Dohme Corp & ANR vs YMS Laboratories Private Limited

In this case, the plaintiff, owner of patents pertaining to Sitagliptin and its derivative salts, filed an infringement suit against the defendant. The plaintiff prayed for an Ad Interim Injunction during the pendency of the suit. After reviewing the facts presented, the Court granted an Exparte Ad Interim Injunction as the plaintiff made out a prima facie case. The plaintiff in the case submitted evidence to show that the defendant was planning to launch an infringing product under the brand ‘Stallip – m,’ which enabled it to get the Exparte injunction.

Citation: Merck Sharp And Dohme Corp & Anr vs Yms Laboratories Private Limited, Decided by Delhi High Court on 31 May, 2021, available at: https://indiankanoon.org/doc/56196795/?type=print.

FMC Corporation & ANR. vs Natco Pharma Limited

The patent holder (plaintiff) in this case held two patents covering the product and process to make Chlorantraniliprole (“CTPR”), an insecticide.
The patents were species patents that were claimed in markush claims of an expired patent that covered several species along with the patents in question. When the plaintiff filed this suit for patent infringement of its CTPR patents, the defendant countered that the patents are invalid because they were covered in a prior patent. In response, the plaintiff argued that though the species were covered, they did not form part of the patent disclosure.

In this particular order, the Court dealt with an application filed by the defendant to permit launch of its products pending the suit and applications for interim injunctions. After hearing the parties, the Court came to the conclusion that such a permission may not be granted taking into consideration the fact that damages from patent infringement are not always calculable. It also pointed out that non-disclosure in a prior patent not be fatal to subsequent patents though they are covered in the earlier patent.
The Court in the case also did not see the need to permit the sale of the products in furtherance of public interest.

Citation: Fmc Corporation & Anr. vs Natco Pharma Limited, Decided by the Delhi High Court on 19 May, 2021, available at: https://indiankanoon.org/doc/95815021/.

FMC Corporation & ANR. vs Natco Pharma Limited

In this comprehensive judgment with respect to grant of interim injunctions involving a patent relating to “Chlorantraniliprole” (also known as CTPR), the Delhi High Court rejected a valiant effort by the defendant based on several grounds under the patent law. The Court refused to grant permission to the defendant to manufacture and sell the insecticide during the pendency of the suit. While coming to its conclusion, the Court pointed out that the defendant failed to make a credible challenge with respect to vulnerability of patent validity.

The Court stated that the Supreme Court’s judgment in Novartis does not state that disclosure is equal to claim coverage, but simply points out that there cannot be a large gap between the two. The Court also observed that disclosure of a compound in a markush claim does not necessarily make the species patent susceptible to anticipation, prior claiming, obviousness or Section 3d challenge. It then went on to cite some principles pertaining to analyzing patentability of selection patents by equating selection patents to species patents in this case. The judgment is a good read, especially the arguments of the defendant’s attorney, Mr. Sai Deepak.

Citation: FMC Corporation & Anr. vs Natco Pharma Limited, Decided by the Delhi High Court on 7 July, 2021, available at: https://indiankanoon.org/doc/83320267/, visited on 9th July, 2021.

Read Latest Patent Cases in 2021 – Part 1 here

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