In this post, we bring to you few Patent Cases decided by Indian Courts in the year 2021
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.
Novartis Ag & Anr. vs Natco Pharma Limited & Anr.
This case relates to a patent covering Eltrombopag Olamine (Eltrombopag
bis(monoethanolamine)) held by Novartis. The drug is used for treatment of thrombocytopenia sold under the brand name “REVOLADE.” Novartis filed a patent infringement suit against the Defendant, NATCO, which was planning to launch the same product. In response NATCO claimed patent invalidity based on prior claiming, obviousness, Section 3d, industrial applicability and Section 8 non-compliance.
After hearing the parties, the Court held that the claims of invalidity of NATCO do not hold water, and restrained NATCO from launching the product during the pendency of the suit. This case outlines some important patent principles, and is a highly recommended read for a crisp understanding of prior claiming, non-obviousness, Section 3d, and genus/species patent interplay from the context of coverage and disclosure.
Case Citation: Novartis Ag & Anr. vs Natco Pharma Limited & Anr., Decided by Delhi High Court on 13 December, 2021, available at:
https://indiankanoon.org/doc/104159826/, visited on 19th December, 2021.
Sulphur Mills Limited vs Dharmaj Crop Guard Limited & Anr.
In this case involving a patent with respect to an agricultural fertilizer composition, the Delhi High Court granted an interim injunction in favour of the patent holder. In a comprehensive and well written judgment, Justice Pratibha Singh rejected the defendant’s plea of prima facie patent invalidity based on a preexisting patent of the patent holder. Justice Singh came to the prima facie conclusion that the patented invention was novel and inventive because it used higher percentage of sulphur and smaller particulate size compared to the prior patent of the patent holder. She pointed out that there is no teaching, suggestion or motivation in the prior patent to arrive at the patented invention. She referred to the standard of the person in the know put forth by the Delhi High Court in a recent case, and stated that the invention would be non-obvious despite the said standard. As the defendant failed to make out a prima facie case of invalidity, the Court granted an interim injunction in favour of the plaintiff.
Citation: Sulphur Mills Limited vs Dharmaj Crop Guard Limited & Anr., Decided by the Delhi High Court on 2nd August, 2021, available at: Sulphur Mills Limited vs Dharmaj Crop Guard Limited & Anr. , visited on 4th August, 2021.
Novartis Ag & Ors. vs Natco Pharma Limited
This case relates to a patent pertaining to a pharmaceutical composition comprising combination of Valsartan and Sacubitril or pharmaceutically acceptable salts held by Novartis. Novartis filed an infringement suit against NATCO and others and sought an interim injunction during the pendency of the suit. NATCO argued in the case that its supramolecular complex, which includes Valsartan, Sacubitril, solution ion and water molecules is not covered within Novartis’ patent. It also argued that a later application filed by Novartis with respect to the supramolecular complex excludes it from the scope of the patent being asserted against NATCO. The Court rejected both the arguments and stated that NATCO’s complex is covered within the scope of the Novartis’ patent claim. While doing so, the Court also rejected the opinion of the scientific advisor which observed that NATCO’s supramolecular complex is not covered in the claim. It therefore granted an interim injunction in favour of Novartis.
Citation:Novartis Ag & Ors. vs Natco Pharma Limited, Decided on 28 October, 2021, by Delhi High Court. Available at: https://indiankanoon.org/doc/15824335/, visited on 2nd November, 2021.
This post is brought to you by BananaIP’s Consulting & Strategy Department.
About BananaIP’s Consulting & Strategy Department
BananaIP’s Consulting & Strategy Department has the experience of helping companies use IP for business and competitive advantage. Companies regularly seek their assistance, advise and opinions on identifying/mining inventions and creations, conducting IP audits, protecting IP assets appropriately, launching risk free products, managing litigation for business benefit, resolving disputes out of Court, making money out of IP, enforcing IP, and licensing transactions. If you have any questions, or need any clarifications, please write to email@example.com.
Please note that these case updates have been put together from different sources, primary and secondary, and BananaIP’s reporters may not have verified all the decisions published in the bulletin. You may write to firstname.lastname@example.org for corrections and take down.