In the present case, Delhi High Court passed an order holding that the discretionary reliefs provided under Section 34 and Section 38 of the Specific Relief Act 1963 are not applicable in patent disputes. Bristol-Myers Squibb Holdings Ireland Unlimited Company (hereinafter referred as BMS) instituted a suit for patent infringement and sought permanent injunction against Natco Pharma (hereinafter referred as Natco). Brief facts of the case are:
- Two Indian patents bearing numbers IN 243917 and IN 247381 containing the Markush structure and the specific compound APIXABAN respectively were the basis of conflict in this case.
- Natco Pharma was planning to launch a generic version of Apixaban under the probable brand name “Apigat”.
- BMS sought for permanent injunction against Natco for APIXABAN (Patent No. IN 247381), valid till Sep, 2022, before the Delhi High Court. “Apixaban” used in the prevention and treatment of thromboembolic diseases.
- In June 2019, Natco on the other hand had filed a suit under Section 34 of Specific Relief Act, 1963, in the District Civil Court, Hyderabad against BMS seeking a declaration that APIXABAN is covered by a senior patent (Patent No. IN 243917) but not claimed therein, and hence open for public use.
- Before Delhi High Court BMS disclosed that they were also the owner of the senior patent which was permitted with a Markush claim encompassing trillions of compounds inter alia also generically covering APIXABAN. They also believed that the manufacture of APIXABAN by Natco also infringed the senior patent.
- Natco filed an application under Section 10 of CPC, 1908 seeking a stay on the ground of pendency of the prior instituted Hyderabad suit. They also wanted to seek a proclamation of non-violence under Section 105 and groundless threats under Section 106 of the Patents Act, 1970.
Issues
The main issues before the Hon’ble Court were:
- Whether the proceedings in an infringement suit are liable to be stayed under Section 10 of the Code of Civil Procedure (CPC) owing to a declaratory suit previously filed by the other party in a different civil court?
- Whether the reliefs provided under Sections 34 and 38 of the Specific Relief Act 1963 are applicable in a patent infringement?
Arguments
- By Plaintiff i.e., BMS
- BMS contended that the senior patent (Patent No. IN 243917) contains a Markush structure which could result in millions of compounds. It has a wide coverage but doesn’t specifically disclose Apixaban. Therefore, Apixaban is not the subject matter of protection in Patent IN 243917.
- They argued that this infringement suit and the declaration suit in Hyderabad are not of the same subject matter and hence, Section 10 of CPC is not valid. This patent infringement is about IN 243381 and not the senior patent IN 243917.
- Further they contended that Hyderabad suit has been filed under Section 105 of the Patents Act, 1970 but the requirement under the said provision have not been fulfilled by Natco.
By Defendant i.e., Natco
- They argued that the patent held by BMS (Patent No. IN 243917) covers ‘Apixaban’ but doesn’t specifically disclose it in the claims and thereby surrenders to the public.
- They further argued that BMS is trying to secure monopoly by ever greening their patent. They contended that the senior patent claims ‘Apixaban’.
- They contended that the Hyderabad suit was instituted under Section 34 of the Specific Relief Act, 1963.
- They contended that since the Hyderabad suit was instituted prior to the suit by BMS, the suit before the Delhi High Court was liable to be stayed until the proceedings in the Hyderabad suit were concluded.
Judgement
Court relying on various judgements held that:
“On 23rd Jan 2020, the Hon’ble Delhi High Court observed that the patent related affairs were subject to Patents Act, Thus the defendant could not seek declaration of non-infringement under Specific Relief Act, 1983. The court considered the non-obstante clause in Section 105 of the Patents Act which specifically excludes Section 34 of SRA, 1983. The Court also observed that the Defendant in the Hyderabad Suit was effectually questioning the validity of the senior patent which cannot be adjudicated by a Civil Court under the scheme of the Patents Act. Furthermore, the Hyderabad Civil Court was not a competent court to grant reliefs sought in the Delhi Suit as well as the Hyderabad Suit, which is one of the compulsory pre-requisites for entertaining an application for stay of a subsequent suit under Section 10 of The Code of Civil Procedure (CPC) Therefore, in the light of the following observation the Court dismissed the application of Natco under Section 10 of CPC for a stay of the Delhi suit, and relegated the matter to trial.”
This judgement simplifies the legal position that any issue with regard to patents is to be agitated within the contours of the Patent Act and not beyond. By the way of clever drafting one cannot defeat or delay the valuable rights of patent owners.
By: Runjhun Sharma, School of Law, Mody University
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