Patent Cases in 2020 – Short Notes and Summaries
Cde Asia Limited (Plaintiff) vs Jaideep Shekhar & Anr (Defendants)
Decided on 24 February, 2020 by Delhi High Court
The Plaintiff in the case filed an infringement suit claiming that the Defendants infringed its patent and design relating to “System Device Process for Classification of Various Materials.” In response the Defendants filed an application under Order VII Rules 10 and 11 for rejection of the plaint, wherein they argued that the plaint was not maintainable based on the post-grant opposition filed by the Defendants under Section 25 of the Patents Act and that the cause of action did not arise in Delhi. The Court dismissed the application stating that the suit is maintainable though an opposition was filed as patent rights begin from the date of grant, and because the Defendants have business operations in Delhi. The Court also pointed out in the case that the Defendants do not have the option of pursuing opposition and counterclaim for revocation simultaneously as they are alternative remedies available to the Defendants.
Bristol Myers Squibb Holdings vs Natco Pharma
Decided on 23 January, 2020, by Delhi High Court
(CS(COMM) 342/2019 & IA No.9768/2019).
In this case, the Defendant, NATCO Pharma, filed an interim application for stay of proceedings under Section 10 of CPC as they had earlier filed a case against the Plaintiff, Bristol Myers Squibb Holdings, in Hyderabad. The case filed by the Defendant in Hyderabad was prayed for declaration of non-infringement of Plaintiff’s patent and injunction restraining groundless threats, among others. Following the Defendant’s suit in Hyderabad, the Plaintiff filed a suit for patent infringement against the Defendant before the Delhi High Court, which the Defendant argued has to be stayed.
After hearing the parties, the Court held that the suit before the Delhi High Court need not be stayed because the reliefs claimed by the Defendant in the Hyderabad suit were not founded in the Patents Act, but in the Specific Relief Act. The Court also pointed out that the declaration of invalidity pleaded by the Defendant cannot be decided by the Hyderabad Court. Stating that the Defendant’s suit was an abuse of process and was filed with an ulterior motive, the Court dismissed the interim application.
Bristol-Myers Squibb Holdings (Plaintiff) vs Bdr Pharmaceuticals (Defendant)
Decided on: 30th January, 2020 by Delhi High Court
In this case, the Court granted an interim injunction to the Plaintiff against the Defendant stating that the Defendant did not have a prima facie case for revoking the suit patent. The patent in the case related to “Lactam-Containing Compounds and Derivatives Thereof as Factor Xa Inhibitors.” The Defendant in the case argued that the invention was obvious based on a combination of prior arts, and that the invention did not pass the efficacy muster under Section 3(d). After reviewing the prior art, the Court stated that the references taught away from the invention in question, which makes the invention non-obvious. As per the Court, a person with ordinary skill would not arrive at the invention without hind sight analysis, which is not permitted. With respect to Section 3(d), the Court stated that the fact that the product was launched in the market after the patent filing itself indicated efficacy.
Para 36 of the judgment, which summarizes some important inventive step principles reads as follows:
“36. From the judgments as noted above, some of the principles which govern the field to find out whether an invention is obvious or not can be summed up as under:-
(i) A hindsight reconstruction by using the patent in question as a guide through the maze of prior art references in the right way so as to achieve the result of the claim in the suit, is required to be avoided.
(ii) The patent challenger must demonstrate the selection of a lead compound based on its promising useful properties and not a hindsight driven search for structurally similar compounds.
(iii) There should be no teachings away from the patent in question in the prior art.
(iv) Mere structural similarity cannot form the basis of selection of lead compound in a prior art and the structural similarity in the prior art document must give reason or motivation to make the claim composition.
(v) Though mosaic of prior art documents may be done in order to claim obviousness, however, in doing so, the party claiming obviousness must be able to demonstrate not only the prior art exists but how the person of ordinary skill in the art would have been led to combine the relevant components from the mosaic of prior art.
(vi) It has to be borne in mind, small changes in structures can have unpredictable pharmacological effects and thus, structural similarity alone is not sufficient to motivate to selection of the lead compound.
(vii) Though it would be tempting to put together a combination of prior arts but this requires a significant degree of hindsight, both in selection of relevant disclosures from these documents and also in disregarding the irrelevant or unhelpful teachings in them.”
Astrazeneca Ab & Anr. (Plaintiff) vs Emcure Pharmaceuticals Limited and Others (Defendants)
Decided on 15 January, 2020 by Delhi High Court.
This case involved patents over a pharmaceutical compound called TICAGRELOR, which is used as oral anti-platelet treatment for Acute Coronary Syndrome. The Plaintiff in the case prayed for an ad interim injunction, which was contested by the Defendants primarily on grounds of invalidity based on patentability. They argued that disclosure of the compound in the genus patent through markush claim precluded its patentability through the species patent in suit. The Court rejected the argument by stating that a markush claim in a patent does not make a subsequent patent claiming one of the markush compounds unpatentable. As the compound in question was launched after filing of the species patent in suit, the Court pointed out that the genus patent does not affect its patentability. It also relied on US litigation and other materials to arrive at the said conclusion. However, the Court refused to grant the interim injunction as the patent had expired. The Court asked the Defendants to maintain accounts until the patent expiry date.