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This is a judgement by the Delhi High Court in April 2018 where the plaintiff sued the defendants alleging that their patents were being infringed by the defendant. The plaintiff (UPL Ltd.) was granted 3 patents:
- IN 206130: “a chemically stable synergistic herbicidal composition” (a product patent)
- IN 194225: “a process of preparing a chemically stable synergistic herbicidal composition” (a process patent) and
- IN 244551: “a stable synergistic herbicidal composition” ( a product as well as a process patent)
It was claimed by the plaintiff that the compounds “Metsulfuron Methyl and Sulfosulfuron” provide utility in controlling weeds without affecting or damaging the crop. Further, Metsulfuron only controls grassy weeds and is ineffective and lacking control when it comes to broadleaf weeds while Sulfosulfuron controls broadleaf weeds and lacks control over grassy weeds. The compounds lack compatibility physically and chemically. The plaintiff contended that they developed a composition of these two compounds through various excipients. Wettable Granules is the form in which the composition was developed. The developed form is effective in both forms of weeds – broadleaf and grassy.
The plaintiffs contended that they came to know of the fact that the defendants (Pradeep Sharma& others) participated in a tender which was floated by Directorate of Industries & Enterprises Promotion, U.P. The tender was for manufacture as well as supply of the composition consisting of Sulfosulfuron (75%) + Metsulfuron Methyl (5%) WG. An application for registration of the said composition was also filed by the defendants under Sec. 9 of the Insecticides Act, 1968. Thus, it was claimed by the plaintiffs that they alone had rights over the composition because of the patents granted to the plaintiffs. It was further contended by the plaintiffs that only they had the rights over the manufacture as well as the sale of the composition of Sulfosulfuron (70-80%) + Metsulfuron Methyl (5-10%) WG. Thus it was argued by them that the defendant should be injuncted from infringing the patents of the plaintiffs and these were the circumstances for which a suit was filed by the plaintiffs in the court.
The defendant’s contention was that the two compounds were already known as well as individually well-recognized herbicides (metsulfuron methyl since 1986 and sulfosulfuron since mid-1990) and that they are not proprietary to the plaintiffs. Further, the plaintiffs argued that their combination as various sulfonylurea has also been known since the 1990s. The defendants went on to argue that each of the elements of the patented product is covered by the claim and if any essential element appears missing from the defendant’s product, then, there could be no infringement. The defendants also argued that their product was very different from the plaintiffs and that the defendant’s claim is not covered under the scope of the suit patents. The defendants based this contention on a finding of the Registration Committee of the Central Government Insecticides Board in 2006 where the product of the defendant which was filed for registration was held to be not covered by a composition which was prepared by the process patent IN 194225. It was further argued by the defendant’s that the patents IN 206130 and IN 244551 lack any individual existence apart from the patent IN 194225 and that there could be no infringement of IN 244551. The defendant did not use many of the materials as used in the plaintiff’s product such as the stabilizer, absence of tallow soap as a defoamer and also the wetting agents differed in composition. The defendants put before the court that a clear description was not provided by the claims and the same was contrary to Section 10 (4) of the Patents Act. The defendants also relied on a research paper of Dr. C. P. Singh and US Patent Claim 301.
The learned single judge held that there is no difference between the products of the plaintiffs and defendants other than that of a stabilizer which cannot be considered an essential ingredient Prima facie it appears that the defendant’s product registration relates to the suit patent of the product of the plaintiff. It cannot be said that the addition of a stabilizer up to 10% cannot be said to be not infringing the patent of the plaintiffs as all the essential ingredients are in the same composition. It was further held by the learned single judge that even though Dr. C. P. Singh’s paper was prior art, the findings of the paper differed vastly from the patent of the plaintiff. Further, there is seen a vast difference between US Claim 301 and the plaintiff’s patent. The learned single judge also held that the Insecticides Registration Committee lacks jurisdiction as to decide on the matter of patent registration based upon the judgment of Shogun Organics Ltd. Vs. Union of India (2013) SCC Online Ker 22792 and thus their finding has no validity Thus it was held by the learned single judge that the defendants have failed to establish the suits patent as invalid and that pre-grant opposition to the said patent was already dismissed by the Appellate Board and the settlement with Gharda Chemicals establishes a case in the favour of the plaintiff.
An appeal against the order was filed by the defendants before the Delhi High Court arguing that the learned single judge erroneously passed a judgement ignoring the finding of the Insecticides Registration Committee. The appellants argued that the research paper and US 301 were publicly available and they relied upon the same. They also argued that the judgement erred in giving importance to the fact which indicates that various companies had obtained a license from the plaintiffs. Thus, they argued that there was no infringement of the plaintiff’s patent as it was not novel and not eligible for protection.
The Delhi High Court held that there was no error on the part of the learned single judge in passing the above order and it was rightly concluded that the difference between the products of the plaintiff and the defendant was that of a mere stabilizer. The court further held that correct tests were applied by the learned single judge for adjudication of patent infringements. The order was based on the appreciation of facts and detailed analysis and the court stated that it should not subject the materials as appraised by the learned single judge as though the present proceeding were a regular appellate review of a final judgment.
Thus, the court accordingly dismissed the appeal holding that it lacked any merit.
Author: Maahi Mayuri, BBA LLB, New Law College, Pune, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at Niharika Sanadhya