DHC maintains the injuction on Cipla For Onbrez

The Delhi High Court (DHC) by its decision continues to bar Cipla Ltd from selling copies of Novartis AG’s drug Onbrez in India.

An appeal was filed by Cipla against an order passed by Justice Manmohan Singh in January 2015 which restrained Cipla from selling copies of Onbrez (indacaterol). In the Appeal, the Court has maintained the decision on January 2015.

Stay tuned for a detailed report!

Writ for Enzalutamide admitted by the DHC

The Regents of University of California, has filed a writ against the order of the Controller refusing the grant of an application filed by them in India, covering the drug product Enzalutamide (Xtandi). On 2nd March 2017 the matter was listed before Hon’ble Mr Justice Sanjeev Sachdeva of the Delhi High Court (DHC) and Mr Chidambaram made the following arguments on behalf of the Petitioner:-

  1. That the present Writ Petition has been filed against the common order dated 8th November 2016 allowing the five pre-grant oppositions, rejecting the Petitioner’s Patent and the said order has been passed in gross violation of the principles of Natural Justice;
  2. That the Patent Application which is the subject matter of the Writ Petition has been granted Patent in around 50 countries;
  3. Further, the marketing approval has been granted in around 75 countries;
  4. That the patent applicant had filed evidence affidavits of three witnesses including the two inventors. However, the impugned order grossly erred in not considering or even referring to the evidence filed by the patent applicant.

In view of the above, the Hon’ble Judge has issued notice in the Writ Petition, returnable on 2nd May 2017.

Business Standard and http://www.india.com reported as to what transpired in Court on 2nd March 201, and the same can be accessed here:

http://wap.business-standard.com/article/pti-stories/hc-seeks-reason-for-denial-of-prostrate-cancer-drug-patent-117030500251_1.html

http://www.india.com/news/agencies/hc-seeks-reason-for-denial-of-prostrate-cancer-drug-patent-1894207/

Stay tuned for more updates!

 

 

Section 24(5) declared void

Section 24(5) of the Protection of Plant Varieties and Farmers’ Rights Act, 2001, has been declared void by the Delhi High Court. Prabhat Agri Biotech Ltd, Nuziveedu Seeds (P) Ltd and Kaveri Seed Company Ltd. challenged the vires of Section 24(5) of the Protection of Plant Varieties & Farmers’ Rights Act in a writ before the Delhi High Court. The writ has recently been allowed.

Section 24(5) empower the Registrar to issue “such directions to protect the interests of a breeder against any abusive act” during the period between filing of application for registration and decision taken by the Authority on such application. The said impugned provision reads as follows: “(5) The Registrar shall have power to issue such directions to protect the interests of a breeder against any abusive act committed by any third party during the period between filing of application for registration and decision taken by the Authority on such application.”

 The petitioner’s challenged this section on various grounds like:-

  • the provision does not  envisage any compliance with principles of natural justice when such orders are issued;
  • the provision gives the power to issue interim directions even before the concerned breeder’s application for registration has been accepted and any rights have accrued,
  • The provision does not provide any details of the orders that can be issued by the Registrar, such as, the conditions subject to which they can be issued, or the duration of their operation etc.
  • the Act does not provide for any appeal against the issuance of an order under the impugned provision, and therefore any error in the order is difficult to be corrected
  • the Act does not prescribe any qualifications for the Registrar who is empowered to issue such orders, and it is a well settled principle that substantial questions of law can only be decided by tribunals consisting of an adequate number of judicial members with legal qualifications

The Court agreed with the Petitioner and held that, “although the provision envisages the issuance of orders to injunct the commission of abusive acts, it does not explain what acts are to be considered abusive. This further fortifies the argument that the Registrar has been vested with unbridled power under the Act”. The Court further went on to state that, “The term “abusive act” is not defined; likewise, the question of decision taken by the authority on such application. More importantly the decision – final – taken upon an application for registration according to the provision is “by the Authority””.

Further, the Court held the provisions to be arbitrary and void, as infringement is a matter to be determined by regular courts, as the orders made under the impugned provision can have lasting adverse consequences, and there is no statutory provision ensuring that Registrars have minimum experience as quasi-judicial officials.

Whilst the qualification of Registrars as technical experts allows them  to be capable of deciding whether the DUs test (to determine infringement) is satisfied; it does not fully dispose to handle issue of the moment especially concerning interim measures. This is of particular significance given that there is no appellate remedy against such orders which makes  outcome fraught, undermining the rule of law and injecting arbitrariness to the entire exercise.

 

Dolby sues Oppo and Vivo

Dolby has sued two Chinese phone manufacturers, Oppo and Vivo, at the Delhi High Court stating that the two companies are using Dolby’s SEPs without a license. The Hon’ble Delhi High Court has held the following: –

  1. That Oppo and Vivo shall deposit royalty with the Court @ INR 34 per unit manufactured/sold/imported by 8th of every succeeding month.
  2. That Oppo and Vivo shall furnish details of the units manufactured, sold and imported, to Dolby by 5th of every month.
  3. That Oppo and Vivo shall continue to manufacture, sell and import their units in the interim while licensing negotiations based on Fair, Reasonable and Non-Discriminatory (FRAND) terms between the parties is ongoing.

Delhi DB raises the bar of burden of proof on the Defendant to establish a credible challenge

A bench comprising of Justice BD Ahmed and Justice Sanjeev Sachdeva recently passed an order granting an injunction in a patent matter. The DB reversed an order of Justice Manmohan Singh who had denied the injunction.

The Court has also hinted at a presumption of validity of the patents holding that the grant of the patent by the IPO and the USPTO heightens the burden for establishing a credible challenge (see point IV. below)

The principles laid down by the Division Bench are culled out below:

  1. The principles governing patentability of an invention have been summarized as under:
    • it must be the inventor’s own discovery;
    • it should not be a mere verification of what was already known before the date of the patent;
    • it is a manner of new manufacture and includes an improvement and an allied invention;
    • must also be useful;
    • not only the art, process or manner of providing, preparing or making an article but also the article prepared or produced by the manufacture can be patented;
    • should be more than a mere workshop improvement;
    • the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before;
    • a combination of old, known integers may be so combined that by their working inter-relation they produce a new process or improved result;
    • mere collection of more than one integer or things, not involving the exercise of any inventive faculty, would not qualify for the grant of a patent;
    • there must be novelty in the mode of application and the novelty must show invention;
    • the new subject-matter must involve “invention” over what is old;
    • must involve something which is outside the probable capacity of a craftsman;
    • it must not be the obvious to a skilled worker, in the field concerned,
    • it must not be a natural suggestion of what was previously known;
    • Prior public knowledge of the alleged invention would disqualify the grant of a patent and prior public knowledge can be by word of mouth or by publication through books or other media;

     

  2. Merely because the prior art and the subject patent use the same term for a feature does not necessarily mean that the feature is the same. The said term may have two different meanings in the prior art reference and the subject patent. For the invention to be anticipated, the feature disclosed in the prior art must pertain to the same concept as claimed in the patent.
  3. The entire specification and teaching of the prior art must be considered while determining patentability. Mere reference to the abstracts of the prior art documents without considering the teaching of the prior art in the detailed description is erroneous.
  4. The Indian Patent Office and the United States Patent Office have granted the patent and have not found that the patent is obvious in view of the cited prior art. Since these expert bodies have found the patent to be non – obvious, the burden of proof on the Defendant to establish a credible challenge is even greater.

Ericsson on a spree of favourable orders

Delhi High Court passed an interim injunction order in the ongoing case of Telefonktiebolaget LM Ericsson v. Lava International Ltd that prevents Lava from importing, exporting, manufacturing, and selling any mobile phones that use Ericsson’s 8 SEP patents and technology.The defendant is also barred from exporting the impugned goods. The Custom Authorities have also been directed to not release the impugned mobile phones if received from overseas countries under technology of suit patents of the plaintiff. 

The interim order, which is passed on merit, directed defendant to  deposit a sum of Rs.50 crores with the Registrar General of the Court by way of FDR as security amount on or before 20th June, 2016, the operation of interim order shall remain stayed till the final disposal of the main suit. In addition to that, the defendant was also asked to file the statement of accounts for the period of 2011 to 31st May, 2016 before Court by 10th July, 2016 and continue to file the same every quarterly till the final judgment is delivered in the main suit.

Section 3(k)

With regard to Section 3(k), the Court held that, the ultimate object of the invention is an efficient encoder rendering the synthesized speech quality in relation to radio resource needed for transmission is as high as possible. The Court noted that the speech quality is an effect perceptible by the humans and is not just as abstract entity. The judge pronounced that:

 “Prima facie, it appears that these inventions which have resulted in an improvement (technical advancement) in telecommunication technologies and have had a huge effect upon the manner in which these technologies function thereby resulting in practical implementation and actual physical representation Mere mention of an algorithm or a mathematical formula in a patent document should not be inferred to mean that the invention is nothing but an algorithm. The similar issue has already been dealt by this court in a suit filed against INTEX in great details wherein the arguments of doubtfulness were rejected. Thus, no different view is possible in the present case.”

The Court also held that product patents cannot be labelled as algorithm because they are not a set of instructions and are not theoretical in nature. The Court further held the defendant has failed to raise any credible challenge to the suit patents.

As regards the licence agreement, the Court held that the defendant has been consistently delayed execution of the agreement with the plaintiff and in such a case, unlike in trademark and copyright matters, the infringement ought to go in favour of the plaintiff. The Court also held that the plaintiff has been trying to correspond and negotiate with the defendant for the past 4 years and that itself is a huge factor that militates any grant of further time to the defendant , especially in cases of standard essential patents, where a patentee always endeavors to negotiate before filing for an injunction. Moreover, it was held that the fact that the defendant was aware of the plaintiff’s patents but did not challenge the validity goes in favour of injunction.

Concealment of material fact by Ericsson and vacation of injunction on Xiaomi

The Delhi High Court on April 22, 2016 revoked the interim injunction on Xiaomi in the ongoing patent tussle with Ericsson in India. The Court in its judgement has pronounced that there was a greater onus on Ericsson to disclose the material fact- in this case the Multi Product License Agreement which it had with Qualcomm, especially when it was seeking an injunction ex-parte.

On December 9, 2014, the Delhi High Court (DHC) had passed an interim order ordering an interim injunction against Xiaomi.  The Division Bench of the DHC had then allowed Xiaomi allowed to sell its devices subject to certain conditions – to only sell Qualcomm based devices and not Mediatek-chipset based devices.

However, this development emerged as a result of Xiaomi telling the court that it had already got a license for patents (Ericsson’s 3G patent -; IN229632 and IN240471) through Qualcomm, which had in turn secured license from Ericsson. Xiaomi averred that Ericsson had deliberately suppressed the existence and contents of Multi Product License Agreement which it had with Qualcomm wherein Ericsson had granted license in respect of some of its patents to Qualcomm to make, use, sell and import and therefore, the claim of Ericsson that it is not getting royalties is moot. Moreover and additionally, Xiaomi also averred that Ericsson was fully aware that Xiaomi was using Qualcomm’s chips especially in view of the documents and the fact that testing was conducted on a device using Qualcomm’s chipsets.