Patent Year Book 2023-2024

Saikrishna & Associates


Founded in 2001, Saikrishna & Associates is a tier-1 full-service law firm offering end-to-end services (from handholding during product ideation/creation to prosecution, regulatory compliances and enforcement) to a gamut of industries spanning the TMT, Entertainment, Electronics, Pharma, Life Sciences, Software, Artificial Intelligence, E-commerce, Automotive, FMCG, Retail and Real Estate Sectors.
In its judgment dated 07 February 2024, a Division Bench ruled on the interpretation and scope of product-by-process claims, holding that,
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Division Bench Judgments

  • DB interprets product-by-process claims.

In its judgment dated 07 February 2024, a Division Bench ruled on the interpretation and scope of product-by-process claims, holding that,

  • Product-by-process claims:Patents Act confers patent protection to both products and processes. A product-by-process claim is an amalgam or hybrid, which straddles the otherwise discernible and recognized distinction between products and process patents per se. Product-by-process claims relate to a novel and inventive product, which is unknown in prior It would remain a product which is within the ambit of Section 48(a). However, a product is not novel merely because it is produced by a new process, if such is the case it would be treated and granted as a process patent.
  • Rule of necessity (Product-by-process claim, where permitted): Such claims are permitted where it would be difficult to define the product with reference to its structural features, where it is not possible to satisfactorily or with sufficient clarity explain the characteristics of a novel invention based on its composition or structural parameters.
  • Product "Obtained by" v. "Obtainable by" process claims (the form of claims): Section 48(b) is concerned with a process patent per se. A process claim and the extent of protection that can be claimed in respect thereof would have to draw colour and content from Section 48(b) which embodies the phrase "obtained directly by that process".
  • The words "obtainable by" appear to convey a descriptive process by which the claimed product could be manufactured or However, that process need not and invariably be the inventive element of the patent. Whereas the expression "obtained by" would be intended to convey a direct linkage between the product and the process. In context of our statute, the latter would in most situations be concerned with a process claim referable to Section 48(b) and ultimately liable to be construed accordingly be it for patentability or infringement analysis. Consequently, an "obtained by" claim tested whether on the anvil of Section 48(b) or the canons of claim construction would lead us to the same conclusion, namely, the patentee having intended to restrict the scope of the claim to the recited process. Usage of "obtainable by" language is identical to what occurs in Section 48(a) and extends to product claims per se.
  • Standards of patentability and infringement: Process features of such claims (product-by-process) do not serve as a limitation during infringement proceedings.
  • There cannot be distinct tests/ standards of novelty being applicable at stage of patentability and those for deciding infringement. Both at stage of grant (patentability) and while determining infringement, the language of claims remain unaltered. Claims and specifications do not change hues but remain static.
  • INN allocation is not irrefutable evidence of an invention: The question of patentability is to be examined and evaluated independently. The conferral of an INN cannot be accepted as constituting irrefutable evidence of an invention. It could at best be viewed as corroborative of an assertion of a patentable product having been obtained.

Case: Vifor (International) Limited & Anr. v. MSN Laboratories Pvt. Ltd. & Anr., 2024 SCC OnLine 784

  • Divisional Application, filed suo moto or post Controller's objection, is maintainable if plurality of inventions is disclosed in earlier provisional or complete specification.

A Division Bench, in judgment dated 13th October 2023, clarified the scope of Divisional Applications under Sec. 16 of the Patents Act, holding that a Divisional Application would be maintainable provided the plurality of inventions is disclosed in the provisional or complete specification that may have been filed. The Court further held that,

  • The filing of Divisional application either suo moto by the applicant or while meeting an objection raised by the Controller, would have to be answered on identical lines. The Divisional application can be maintained in either of those situations, subject to plurality of inventions being evidenced from the disclosures made in either the provisional or complete specification which had been filed earlier.
  • Sec. 16(1) is unambiguous and there is no justification for restricting the filing of Divisional application only to situations where the plurality of inventions is found in the claims. Such interpretation would amount to rewriting the provision itself.
  • The significance of the expression "disclosed in the provisional or complete specification" can neither be ignored nor discarded.
  • A provisional specification can be filed without any claims. If plurality of inventions has to emerge only from claims, then no Divisional application could be filed when only a provisional specification has been submitted, leading to an incongruous situation.
  • The doctrine of "what is not claimed is disclaimed" may be relevant for infringement analysis, it has no application to divisional filing and claim drafting and it cannot be imputed for purposes of discerning the scope of Sec. 16.

The DB was dealing with a reference from a Single Judge doubting the correctness of view of another Single Judge in Boehringer Ingelheim International GMBH v. The Controller of Patents (2022 SCC OnLine Del 3777). While answering the reference in above terms, the Court stated that the judgment in Boehringer Ingelheim stands overruled.

Case: Syngenta Limited v. Controller of Patents and Designs, 2023 SCC OnLine 6392

  • Division Bench of Delhi High Court lays down principles relating to patent infringement suits at the interim stage.

The DB of Delhi High Court, in ACE Technologies Corp and Ors. v. Communications Components Antenna Inc., 2023 SCC OnLine Del 2082, dated 10 April 2023, laid down important principles relating to patent infringement suits while deciding an appeal from judgement dated 12 July 2019 of Ld. Single Judge directing the appellants to furnish Bank Guarantee of 40 crores and further deposit of 14.5 crores with Registrar General of Delhi High Court in lieu of interim injunction.

  • Jurisdiction and maintainability: At the pre-trial stage, unless the admitted facts establish that the court does not have the jurisdiction to entertain the suit, the averments in the plaint are required to be considered as correct for the said determination.
  • The onus to show that no part of the transaction of sale and purchase of infringing product was consummated in India, is on the defendants.
  • Claim construction and Credible Challenge: Patent rights are in respect of the specific claims and not the preferred embodiments. Accordingly, credible challenge is to be considered in context of claims.
  • Claims cannot be read in isolation. Description of the patent, specification and the preferred embodiments are relevant for interpreting and understanding the claims. However, specifications and embodiments cannot be read to broaden the scope of claim.
  • Prima facie, if the product is novel and distinct improvement over the known technology, its patent would not be vulnerable to challenge on the ground that patent was disclosed by prior arts.
  • Determining sufficient and enabling disclosure: Whether complete specification sufficiently and fairly describes the invention and the method by which it is to be performed, is required to be viewed from the standpoint of a person possessing skill in, and average knowledge of, the art to which the invention relates. Parties ought to lead expert evidence/ evidence of a person skilled in the art on this aspect, and this is to be examined with reference to specifications, and not the claims alone. Such determination is independent of any observations made by the patent office of any other country.
  • That a patent has been granted in some countries and revoked in another, underscores the point that revocation of suit patent is to be considered by the Court independently.
  • No relief without basis thereof in pleadings: Plaintiff cannot press an actionable claim by filing an affidavit during a subsequent stage in the suit, without amending the plaint. Such affidavit is not a substitute for amendment of pleadings.
  • Safe Distance Rule for party suffering interim injunction: A party interdicted from doing any act in relation to subject matter of the suit, must ensure that it does not commit any other acts which could be construed as violating the court order. Such party cannot try and overcome court orders by continuing its infringing activity in another form or manner.

Accordingly, the appellate court declined to interfere with the impugned judgment. However, it modified the terms of deposit given the difficulty expressed by the appellants/defendants in adhering to the original terms.

Competition Regulatory Authority and Patent Law

  • DB rules that CCI cannot exercise jurisdiction over actions of enterprise that are in exercise of patent rights.

The Division Bench (DB) vide its judgment dated 13th July 2023, in Telefonaktiebolaget Lm Ericsson (Publ) V. Competition Commission of India & Anr. 2023 SCC OnLine Del 4078 held that "the CCI cannot exercise jurisdiction over actions of an enterprise that are in exercise of their rights as a patentee". The Court noted that,

  • Both the statues, Competition Act, 2002 and Patents Act, 1970 are special laws and while deciding which of these ought to prevail, one must consider "(i) the subject matter in question, (ii) the intendment of the statutes in respect thereof, as well as (iii) whether the scheme and relevant provisions of the two statutes have any indication apropos which, the legislature felt must override the other, especially when both statutes have a non-obstante clause".
  • The issue "of whether an agreement under which a patent is licensed will cause an appreciable adverse effect on competition within India or will amount to an abuse of dominant position is not one that is reserved for the CCI".
  • In view of the Court, "the inquiry that the CCI proposes to conduct in respect of an assertion of patent rights is nearly identical to that which the Controller will conduct under Chapter XVI of the Patents Act. The legislative intent is apparent in that the Patents Act especially as amended by the 2003 Amendment that introduced Chapter XVI after the Competition Act was enacted. It is especially for the field pertaining to patents, unreasonable conditions in agreements of licensing, abuse of status as a patentee, inquiry in respect thereof and relief that is to be granted therefor are all to be governed by the Patents Act".
  • The Court further noted that "the inclusion of Section 84(6)(iv) in the Patents Act by way of an amendment after the Competition Act was passed with Section 3(5)(i)(b) is particularly instructive of the above legislative intent as regards anti-competitive agreements".
  • Even though "CCI is empowered under the Competition Act to examine anti-competitive agreements and abuse of dominant position", the Act itself "makes provision for reasonable conditions being imposed in an agreement concerning exercise of rights under the Patents Act". The said "reasonable conditions are exempted from an examination under section 3(5)(i)(b) of the Competition Act" this being "indicative of the legislature's intendment as to exclusive domain of the Patents Act regarding reasonable conditions".
  • On the relevant issue/ subject matter, i.e., "anti-competitive agreements and abuse of dominant position by a patentee in exercise of its rights", the Patents Act "is the special statue and not the Competition Act".

DHC's SEP & FRAND Jurisprudence

  • DB holds that FRAND commitment is not a one-way street and that an obligation is imposed on both the implementer and the SEP holder, and injunction can be sought against unwilling licensee.

A Division Bench, in judgment dated 29th March 2023, held that an SEP owner can seek injunction against an unwilling licensee and further held that,

  • Injunction can be sought and granted in SEP matters, both at the pri ma facie and at the final stage even if only one patent is established to be infringed and the implementer is an unwilling licensee.
  • However, prior to the grant of any such relief the Court must satisfy itself pri ma facie whether the patent is infringed, whether the implementer is an unwilling licensee and/or whether the royalty sought by the plaintiff is on FRAND terms.
  • The parties' conduct during negotiation of a FRAND license is a relevant factor for determining willingness and is usually fact sensitive.
  • Delhi High Court Patent Suit Rules and International jurisprudence are unanimous in holding that the "indirect" method of proving infringement is a sure shot and better method of proving Standard Essential Patent infringement and essentiality.
  • The four-fold test in Nokia Technologies OY v. Guangdong Oppo Mobile Telecommunications Corp. Ltd., 2022 SCC OnLine Del 4014, is neither applicable at Order XXXIX Rule 10, CPC stage nor at Order XXXIX Rules 1 & 2, CPC stage.
  • Disclosure of third-party license agreements by an SEP owner during negotiations is not mandatory for the implementor to revert with a counter-offer. The implementor can place reliance on its own licenses executed with third-parties and other SEP proprietors to formulate an appropriate counter-offer or to determine if the SEP proprietor's offer is FRAND.
  • In case the negotiations fail, the implementers should make certain deposits/furnish security in favour of the SEP proprietor.
  • Mere filing of a revocation petition by Intex, does not mean that it has to be presumed that Ericsson's patents are prima facie invalid.

Case: Intex Technologies (India) Ltd. v. Telefon- aktiebolaget L.M. Ericsson, 2023 SCC OnLine Del 1845

  • DB states that Indian Courts have power to pass pro tem order, if the fact so warrants

A Division Bench, in judgment dated 03rd July 2023, held that it is necessary, if the facts so warrant, for the Court to pass a pro-tem order as a temporary arrangement without a detailed exploration on merits. The Court further held that,

  • The requirement to furnish a pro-tem security is the implementers' obligations during the negotiation stage and for this DB placed reliance on Huawei ZTE (Court of Justice, European Union).
  • In order to balance the equities, Indian Courts have the power to pass a pro-tem order, if the facts so In this regard the Court noted that as per the Delhi High Court's Patent Suit Rules, 2022, the concept of pro tem security has been recognized, as the Courts have the power to pass such orders of deposit even on the first date of hearing. Therefore, even if negotiations between parties have failed it does not mean that the implementer can continue using the SEPs during the interregnum, without making payments. The Court also observed that since an Application under Order XXXIX Rule 1 and 2, CPC is usually heard at length in India wherein Court has to examine various aspect on merits and the same would take time, it is therefore necessary, if the facts so warrant, for the Court to pass a pro-tem order.
  • A pro-tem security cannot be likened to grant of an injunction as it does not prevent the manufacturing and the sale of the infringing The pro-tem security order does not confer any advantage upon the patentee as it only balances the asymmetric advantage that an implementer has over a Standard Essential Patent holder. Standard Essential Patents are a separate subspecies of patent litigation since an SEP holder is not having the freedom to claim an injunction against an infringer without prior negotiations under FRAND terms. Therefore, such principles have to be kept in mind while deciding the application for interim relief, which have to be tailored to suit the sub-species of the case being decided.
  • Section 140 (1) (iii) (d) of the Patents Act does not stipulate that in all cases an ex-licensee who continues to make use of a patent even after expiry of the license agreement, shall not be required to secure the patent holder at an interim stage, while the parties contest the main suit in terms of its The Court was of the view that if that were the case, then no ex-licensee would suffer an interim order and be called upon to provide interim security deposit, thereby rendering the provisions of Order XXXIX Rules 1 & 2 CPC and Order XXXIX Rule 10 CPC as otiose.
  • The four-fold test stipulated in the Nokia Technologies OY v. Guangdong Oppo Mobile Telecommunications Corp. Ltd., 2022 SCC OnLine Del 4014, is neither applicable at Order XXXIX Rule 10 nor Order XXXIX Rule 1 and 2 CPC stage.
  • The test for 'admissions' as prescribed under Order XII Rule 6 cannot be imported into Order 39 Rule 10 of the CPC. The Court held that under Order 39 Rule 10, a party is only required to admit that some money is due to another party and that there was no requirement for an admission about the quantum of money. According to the Court, all that is required is OPPO's admission of the relationship of a licensee-licensor or its resultant obligation to make payment of some license fee. In this context, the Court held that "where there is a dispute about the quantum of liability, then the minimum deposit that ought to be ordered normally is the last-paid-fee". The Court in this backdrop then noted that OPPO has clearly admitted to being an ex-licensee of Nokia and even admitted its need to secure a license for Nokia's SEPs even after the expiry of the 2018 agreement. Additionally, OPPO admitted that it owes money by making counter offers, and had also agreed to make interim deposits, all of which, the Court observed, would not have been done had there been no need to take a license from Nokia.
  • A combined reading of Section 151, Order XII Rule 6, Order XXXIX Rule 6 and Order XXXIX Rule 10 of the CPC, reveals that the Courts have the power to pass orders for depositing money pending decision in the Suit, if the facts so warrant. Section 151 of the CPC can be called in aid to cover cases which are analogues to these principles but may not be directly covered by the express words of the Code.
  • Even in the past pro-tem orders have been passed in Standard Essential Patent disputes by the Court.
  • A delay in the adjudication of cases tends to benefit the implementor / OPPO, and thus a deposit at pro-tem stage could balance equities. Otherwise, Nokia would suffer irreparable harm and injury.
  • Non-furnishing of Nokia's comparable Patent License Agreements is irrelevant at a pro-tem stage.
  • OPPO's conduct prior to litigation has led the Court to arrive at a conclusion that a prima facie case of infringement has been made out.
  • The following facts weighed in the Court's mind while directing the payment of deposits:
    • that Oppo was an ex-licensee;
    • that OPPO had admitted to the use of Nokia's patent in its phones;
    • that OPPO was willing to renew the 2018 Agreement;
    • that OPPO was willing to make interim payment as late as 2021;
    • that OPPO had approached the court in China to determine its FRAND rate;
    • the financial condition of OPPO; and
    • that the Bank Guarantee already sub-mitted was insufficient to secure Nokia.

Case: Nokia Technologies Oy v. Guangdong Oppo Mobile Telecommunications Corp. Ltd. And Ors., 2023 SCC OnLine Del 3841

  • Factors to be considered while granting a pro tem deposit in Standard Essential Patent cases.

In its judgement dated 28th August 2023, a Single Judge passed an ex-parte direction to the Defendants in a SEP dispute to deposit a protem amount with Registrar General of the Court in an auto-renewable Fixed Deposit, failing which an injunction would operate against the Defendants. It placed reliance on Division Bench judgments of Intex vs. Ericsson (2023 SCC OnLine Del 1845) & Nokia vs OPPO (2023 SCC OnLine Del 3841) to hold that a prima facie case for pro tem deposits was made out due to the following factors:

  • The patents of the Plaintiff have been well within the knowledge of the Defendants;
  • The Defendants have engaged in negotiations with the Plaintiff for obtaining a license;
  • The Plaintiff's patents are SEPs which have been licensed to various third parties.
  • The Plaintiff has offered its patents for license but the Defendants have launched their products without clearing the way. The negotiations have been going on for almost two years.
  • Despite litigation ensuing in two countries, there has been no licence agreement signed between the parties;
  • As of August 2023, a counter-offer has been made by the Defendants;
  • The Plaintiff has filed on record, claim mapping chart in order to establish its case of essentiality and infringement in respect of the suit patents.
  • A substantial portion of the business of the Defendants in India is by importation of devices from China without payment of any royalty to the Plaintiff.
  • Even the local manufacturing which is being undertaken by Defendant No. 4 is without payment of any royalty.
  • Despite advance service and notice issued by the Court, most of the Defendants have chosen not to appear before the Court.
  • India is one of the biggest markets of the Defendants, as is clear from the documents of negotiation.
  • The Defendants continue to sell their products and earn revenues while the Plaintiff is asserting its patents in different jurisdictions without receiving any royalties.

Case: Atlas Global Technologies LLC v. TP Link Technologies Co. Ltd. & Ors. 2023 SCC OnLine Del 5475

  • Redaction of irrelevant information is permissible through the aegis of confidentiality club.

A Single Judge vide decision dated 16.02.2023 allowed the Defendant's request to redact irrelevant information from confidential documents being shared as a part of the confidentiality club. In the Order dated 16.02.2023, the Court noted and held:

  • The suit relates to Standard Essential Patents (SEPs) and production of third-party agreement was directed to determine the nature of technology transferred to Vivo under the agreements and whether the patent's features work on the chipset or the handset.
  • In SEP matters, claims of infringement ought to be adjudicated upon prior to the claims of FRAND conduct. In the instant suit, Philips has sued Vivo for infringement as well as for fixation of FRAND terms. Therefore, the former requires adjudication prior to the latter.
  • The purpose of a confidentiality club is to keep certain information confidential, and exclusion of irrelevant information will not undermine the confidentiality of the club. Rather, redacting irrelevant information would aid in preserving the integrity of the club's confidentiality.
  • If the information is not relevant to the purpose for which discovery is ordered, redaction would avoid unnecessary exposure of sensitive information.
  • The Court concluded that only clauses dealing with commercial terms (payment terms and figures) were redacted. The Court held the said clauses to be irrelevant for the purpose for which discovery was directed i.e. for determining the veracity of Vivo's stand that the patented technology resides in the chipset and not the handset, and accordingly allowed Vivo's request to redact commercial terms.

Case: Koninklijke Philips N.V. v. Vivo Mobile Communication Co. Ltd. & Ors., CS(Comm) 383/2020

  • Grant of pro-tem orders in favour of the Plaintiff
    • Case: Koninklijke Philips N.V. v. OPlus Mobitech India Pvt. Ltd & Ors., CS(Comm) 574/2019
      A Single Judge vide order dated 20 December 2023, passed a pro-tem order in favour of the Plaintiff which shall operate during the pendency of the application for injunction.
      • The Court placed reliance on the Division Bench decision of Nokia Technologies OY v Guangdong OPPO Mobile Telecommunications & Ors. (2023 SCC OnLine Del 3841) to hold that the implementer has an obligation to furnish a pro tem security in the negotiation stage itself and the Court has power to pass pro tem orders if the facts so warrant.
      • Placing reliance on DB judgments in Intex v Ericsson and Nokia v Oppo, as well as orders of other Ld. Single Judges of the Delhi High Court, it was noted that a pro tem arrangement can be directed to balance the equities of parties in light of time consumed in patent matters.
      • The conditions for grant of an interim injunction need not be satisfied for a pro tem order.
      • Third-party licenses with other entities prima facie indicate the recognition of the Plaintiff's patents being SEPs.
      • Further, the Defendants are Chinese entities with little to no assets in India.

Accordingly, the Court held that given (i) there are various judgements in favour of the Plaintiff, (ii) recognition of the Plaintiff's SEPs in various other jurisdictions, (iii) failure of the Defendants to negotiate, (iv) evasive stand taken by the Defendants on the use of technology covered by the suit patents, and (v) the financial condition of the Defendants (being foreign entities and/ or having little to no assets in India), a pro tem order is necessitated.

A Single Bench, vide its judgment dated 21st February 2024, directed the Defendants to make certain deposit in Court if the parties are successful in completing the trail within 2024. However, in case the trail extends beyond 2024, the Defendant has to make an additional deposit. Reliance was placed on the Division Bench judgement in Nokia Technologies Oy v. Guangdong Oppo Mobile Telecommunications Corp. Ltd. And Ors.

Genus-Specie Disputes

  • The Delhi High Court once again dealt with several genus-specie disputes, with mixed results for patentees.
    • In Boehringer Ingelheim Pharma GMBH & KG v. Vee Excel Drugs and Pharmaceuticals Private Ltd. & Ors., 2023 SCC OnLine Del 1889 (batch-matters), dated 29 March 2023, (Lingaliptin and Linagliptin+ Metformin) the Court denied interim relief and imposed cost of INR 2 lakhs to be paid to each of the Defendants and additional cost of INR 2 lakhs to the DHC Legal Services Committee on account of detriment to public interest. Interestingly, in parallel proceedings in Shimla HC, vide order dated 02 June 2022, several generics like MSN, Eris, Emcure and Optimus had been injuncted. The Delhi High Court noted that identical Form 27s had been filed for genus and specie patents. Further, it noted that,
    • There is no distinction between old and new patents. A patent can be challenged at any point in its life.
    • Balance of Convenience is against patentee who is simply licensing the product and is interested in monetising.
    • "The plaintiffs are trying to make a distinction between the words, claimed, covered, encompassed and The words covered and encompassed essentially mean the same thing and the plaintiffs are only relying on semantics to make an artificial distinction, which does not exist. When the product is specifically covered in the claims of the patent, whether specific disclosure with regard to the same has been made or not is immaterial."
    • In Regorafenib litigation, Bayer Healthcare LLC Natco Pharma Ltd. and Bayer Healthcare LLC v. MSN Laboratories Private Limited, 2023 SCC OnLine Del 3921, dated 5th July 2023, the Court once again denied interim injunction. It, inter-alia, noted that (i) there is no importance attached to old patent nor is there any presumption of validity of a granted patent. The Court further relied on Public Interest arguments, arguments relating to Section 53(4) as well as the decision of the Division Bench in AstraZeneca (Dapagliflozin) dispute.
    • In Novartis AG & v. Natco Pharma Limited, 2023 SCC OnLine Del 106, decision dated 9th January 2023, a Single Judge had granted interim relief in relation to the drug Ceritinib. Relying on a series of judgments wherein in- terim relief had been granted in context of genus-specie disputes, the court made an important observation in context of coverage v. disclosure debate,

"What matters, at all times, is disclosure. If the claim in a specie patent is disclosed in the genus patent, the specie patent stands invalidated thereby. Disclosure must be enabling; it must enable a person skilled in the art to reach the invention claimed in the specie patent from the teachings in the genus patent. I venture to state that, where this end is achieved before the publication of the specie patent, and before the invention claimed in the specie patent is made known to the public, it would be a far easier task for the claimant contesting the validity of the specie patent to so assert. Where, however, the claim to invalidity is made after the claim in the specie patent has been made known to the public, the challenger becomes a person armed with foreknowledge of the specie patent, so that the task of establishing that the derivation of the claim in the specie patent, from the claim in the genus patent, is actually guided by the teachings in the genus patent, and not by hindsight analysis and cherry-picking of substituents from the suggestion in the genus patent, becomes far more arduous. Where the genus patent is a Markush moiety, the difficulty of the task multiplies manifold. Thus does the disclosure in the genus patent attain significance".

Aspects Related To Revocations

  • A High Court cannot transfer proceedings between two High Courts, this being power of Supreme Court alone.

Respondent/Patentee sought transfer of revocation petitions, for consolidating the same with infringement suits for IN 243301, relating to Lingaliptin. The revocations were filed before the Delhi High Court. Subsequently infringement suits were filed before Himachal Pradesh High Court, wherein interim orders were granted in favour of the Patentee. Patentee submitted that IN '301 is expiring on 18 August 2023 and grounds raised in revocation would be similar to defences raised under Section 107 of the Patents Act.

Court, in its judgment dated 20 July 2023, noted that under the Patents Act, there are various remedies available to any person interested who wishes to seek revocation, i.e., filing of post-grant opposition; filing of revocation petition; filing of a counter-claim; raising defences of invalidity under Section 107.

Relying on Dr. Reddy's Laboratories Limited, (C.O. (Comm. IPD-PAT) 03/2021 dated 10 November 2022), Court observed that "a revocation petition can be filed wherever the effect of the patent is felt". The subject patent was also granted by the Delhi patent office. The revocation petitions are maintainable before the Delhi High Court.

Court further observed that, "Usually if a revocation petition and a suit for infringement are filed before this Court, the proceedings are consolidated. Even if the suit for infringement is before a Commercial Court, upon the raising of issues relating to invalidity, the matter is transferred to the High Court in view of Section 104 of the Patents Act, 1970.

Powers of consolidation under Rule 26 of the IPD Rules can be exercised by the IP Division of Delhi High Court, to consolidate proceedings to the same IP asset, provided they are pending either before the IP Division or before any of the Commercial Courts in Delhi. Such power does not extend beyond the territorial jurisdiction of the Delhi High Court."

The prayer for transfer of revocation petitions pending before Delhi High Court to Himachal Pradesh High Court was held to be "completely untenable". Delhi High Court "cannot exercise power to transfer proceedings between two separate High Courts" and the said power can be exercised by Supreme Court alone under Section 25 of CPC. Application by the patentee dismissed.

Case: Eris Lifesciences Ltd. v. Controller of Patents & Anr. and Macleods Pharmaceuticals Ltd.
v. The Controller of Patents & Anr., 2023 SCC OnLine Del 4429.

  • Revocation is not suit for purposes of Section 10, CPC

The patentee sought stay of proceedings under Section 10 of CPC in respect of revocation petition against IN 268846 relating to Empagliflozin. The Court, in its judgment dated 03 August 2023, dealt with the following three issues,

  • Whether revocation petition was instituted prior, or later, in point of time, to the suit?
    • Revocation was filed electronically on 16 October It was registered on 21 October 2021 and was heard on 22 October 2021. Infringement suit was filed by patentee before Himachal Pradesh High Court on 19 October 2021 and ex-parte stay therein was granted on 20 October 2021.
    • Court noted that the pivotal expression in Section 10 is "instituted" and "Section 10 proscribes a Court from proceeding with trial of any suit in which the matter in issue is directly and substantially in issue in a previously instituted suit between the same parties".
    • Institution of the revocation petition took place on 16 October Presentation of a plaint to a competent officer authorised by this Court is ipso facto institution of the suit within meaning of CPC, particularly Order IV Rule 1(1) thereof. A juxtaposed reading of Order IV Rules 1 and 2 makes it abundantly clear that the suit is instituted when it is presented to the competent officer and registration takes place only thereafter. While the suit stands instituted on the date when the plaint is presented, the suit has to comply with Orders VI and VII of CPC and the date of institution does not get postponed to date of compliance.
    • Electronic filing of pleadings, in accordance with practice directions for electronic filings, would also constitute presentation Hence, revocation petition was instituted prior in time to the infringement suit.
  • Is revocation petition a suit for the purposes of Section 10 of CPC?
    • Relying on the Supreme Court decision in Raju Jhurani (2012 8 SCC 563), the Court observed that there is no reason to treat a revocation proceeding under Section 64 of the Patents Act, as a suit for the purposes of Section 10 of the
    • Even the Patent Suit Rules, 2022, if taken to be applicable, specifically treat only counter claims filed in patent suits, under Section 64, as All other species of challenges to a patent are excluded.
    • The Court cannot create a deeming fiction, where the statue does not do
    • Section 10 merely stays trial of the suit and does not bring to halt the proceedings in the Court seized of the later suit may still pass interlocutory orders.
  • Is a case for stay made out even on merits?
    • It is only where there is a complete equality of the issues in consideration, of the causes of action and the relief sought in two proceedings that the later proceeding can be stayed under Section 10 of CPC.
    • There is a fundamental difference between a revocation petition and an infringement suit. Success of revocation leads to patent being effaced whereas challenge to validity in infringement action merely results in denial of injunction and does not extinguish the patent. The reliefs which would result, therefore, are "completely different". Hence, no case for stay is made out even on merits.

Case: Dr. Reddys Laboratories Limited & Anr. v. The Controller of Patents & Ors., 2023 SCC On- Line 4701

Single Judges Deciding Appeals From Controller's Orders

  • Lack of specificity in raising objections and deprivation of opportunity to address prior arts leads to setting aside of Controller's order.

In an appeal from Controller's decision rejecting grant of patent, a Single Judge, in judgment dated 21 February 2024, noted the following in relation to the grounds of refusal,

  • IPO is obligated to pinpoint at least sub-sections of section 10(4) in FER and/or Hearing Sufficiency of disclosure related objections must be articulated with clarity to ensure fairness. Such objections without non-compliance specifics are not legally tenable.
  • Prior art cited in FER, but not in Hearing Notice in relation to same pending objection deprives Applicant of addressing the same during hearing and Written
  • Prior Art D3 was never cited in FER or hearing It was mentioned for the first time in the Rejection Order. Such procedural irregularities undermine the fairness and integrity of the examination process.
  • D1 and D2 related objections were derived from EPO's Search Opinion and Examination Report. The patent was granted by EPO post claim amendment. The said EPO amendments as per the Applicant's submissions bore close resemblance to scope of the amendments before IPO. The court noted that the same warrants consideration, even if examination processes across jurisdictions have to be independent, since it could have been instrumental in Respondent's decision-making process. IPO need not align its decisions with EPO's decisions, but the latter can provide valuable context.

The impugned order was set aside, and matter remanded for de novo consideration. At request of the applicant, the Single Judge did not deal with issues relating to inventiveness, leaving the same to be decided by patent office upon remand.

Case: Microsoft Technology Licensing v. Assistant Controller of Patents and Designs, C.A. (Comm. IPD-PAT) 26/2022, order dated 21st February 2024

  • Opposition Board Report not binding on Controller and cannot be challenged on merits in a Writ.

In Willwood Chemicals Private Limited v. Assistant Controller of Patents and Designs & Anr., W.P.(C)-IPD 15/2023, order dated 17 March 2023, the Court passed an important order while dealing with petitioner's writ to impugn the Report of Opposition Board in a Post-Grant Opposition filed by Respondent No. 2. In declining to entertain the petition, the Court noted that,

"The Controller, nevertheless, retains the prerogative to diverge from the findings of the Opposition Board, should the facts and circumstances justify such an action. While the recommendations carry weight, the Controller is required to employ independent thought in determining whether to uphold, modify, or revoke the patent. Regardless, the legal framework does not permit an appeal against the Opposition Board's recommendation or scrutinizing the validity of the Report and declaring it unsustainable. The Act, under Section 117A(2), provides for an appeal once the Controller takes a final decision. Petitioner cannot thus be permitted to challenge the recommendations on merits under Article 226/227 of the Constitution."

  • Section 117A appeal is continuation of original proceedings and would lie in the HC having jurisdiction over the appropriate patent office.

In Filo Edtech Inc. v. Union of India & Anr., 2023 SCC OnLine Del 7304, dated 21 November 2023, a Single Judge, agreeing with the decision in Dr. Reddy's Laboratories Limited & Anr. v. The Controller of Patents & Ors. [2022/DHC/004746], held that appeal under Section 117A of the Patents Act, in the facts of the case, would lie before Bombay High Court where the patent application was filed.

The patent application was allotted to the Delhi patent office for hearing. However, the filing office and the appropriate office was the Bombay patent office. The FER was issued on the office letter head of the Bombay patent office. The Reply to FER was also addressed to the Bombay patent office. The impugned order of the Controller did not mention the place of the office.

The Single Judge noted that an appeal is a continuation of original proceedings. Hence, appeal would not lie before the Delhi High Court. Dismissed for want of territorial jurisdiction.

  • Technical Effect and Technical Contribution for patent eligibility of computer programs
  • In judgement dated 15 September 2023, in Raytheon Company Controller General of Patents and Designs, 2023 SCC OnLine Del 5770, the Single Judge was dealing with an appeal from an order rejecting a patent application on grounds of ineligibility u/S. 3(k) and lack of inventive step. In context of Sec. 3(k), the Court noted that,
    • The requirement of novel hardware is not to be insisted upon in applications relating to inventions of computer
    • Interpretation of Section 3(k) is settled in Ferid Allani Union of India & Ors., 2019 SCCOnline Del and Microsoft Technology Licensing v. Assistant Controller of Patents and Designs, 2023 SCCOnline Del 2772
    • The patent office needs to examine if there is a technical contribution or as to what is the technical effect generated by the invention as
    • The Patent Office was in error in applying the 2016 Guidelines for Computer Related Inventions, when the 2017 Guidelines had replaced the same.

Accordingly, the impugned rejection order was set aside, and the patent application was directed to be examined afresh.

  • In Microsoft Technology Licensing, LLC v. The Assistant Controller of Patents and Designs, 2023 SCC OnLine Del 2772, dated 15th May 2023, the court examined the legislative evolution of section 3(k) in relation to the bar on 'computer program per se' and the Guidelines issued by the patent office in relation to Computer Related Inventions, to note that,
    • "The concept of technical effect and contribution is crucial in determining the patent eligibility of CRIs, but there is currently a lack of clarity in this area. It is essential to identify and evaluate technical contributions in CRIs to determine their eligibility for patent protection. The rapidly evolving nature of technology means that what constitutes a technical effect or contribution may become outdated in future. Therefore, there is a pressing need to clarify these concepts in order to strike a balance between protecting the rights of inventors and promoting the public interest and social welfare. Flexible and adaptive approach would ensure patent protection to genuine technological innovations while also preventing grant to overly broad patents that hinder innovation and competition. Thus, establishing clear and consistent criteria and guidelines for determining patentability of computer programs is essential to avoid ambiguity and arbitrariness in the patent system. This can be achieved by providing examples or illustrations of patentable and non-patentable computer programs... Counsels have implored this Court to venture into this arena, however, the Court has chosen to stay away and rather, considers it appropriate to direct the Patent Office to undertake this exercise. They have specialized technical knowledge and expertise in various fields, including CRIs, and are better equipped to consider the nuances and complexities of emerging technologies."

In facts of the case, the Court set aside the order rejecting the patent application basis section 3(k) and the patent office was directed to consider the patent application in relation to assessment of novelty and inventive step.

  • Unreasoned decision rejecting application for lack of inventive step.

In the order dated 08th February 2024 passed in NHK Spring Co. Ltd. v. Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 296/2022, the Single Judge was dealing with an appeal from an order rejecting a patent application on grounds of lack of inventive step under Section 15 read with Section 2(1)(ja) of the Patents Act, 1970. The Court set aside the impugned order and remanded the matter for reconsideration noting that,

  • Inventive Step analysis requires "a rigorous examination of the application, beyond mere surface analysis".
  • An invention has an inventive step "if it eludes the predictable pathways of a skilled practitioner in the relevant field, thereby achieving a distinction that elevates it beyond mere incremental advancements".
  • One must consider "whether the invention demands an exertion of skill or acumen exceeding the normative expectations of a person skilled in the art".
  • "Fragmentary analysis" of claims is not advised and holistic view is advocated in inventive step assessment and "the determination of non-obviousness should not rest on the mere presence of individual components within the claims that are known or might appear obvious when considered in isolation".
  • Forassessinginventivestep,theessenceof the invention must be viewed in its entirety.
  • Relying on Bristol-Myers Squibb Holdings v. BDR Pharmaceuticals International, 2020 SCC OnLine Del 1700, the Court observed that "while a mosaic of prior art documents may be done in order to claim obviousness, however, while doing so, it must also be demonstrated that 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."
  • The Controller did not conduct a nuanced examination mandated by both Patents Manual and judicial precedents. Controller noted the prior arts and claims of the alleged invention but did not attempt to "disclose how the teachings given therein would be obvious to a 'person skilled in the art' to conclude that the alleged invention lacks an inventive step".
  • Permissibility of Claim amendment at appeal stage and ineligibility of business methods

In OpenTV Inc v. Controller of Patents and Designs and Anr., 2023: DHC: 3305, a Single Judge dealt with refusal order of the Patent Office in relation to invention titled "System and Method to provide gift media" which related to network architecture and a method implemented on the same for enabling "exchange of interactive media content distribution of any type of digital or tangible media". The refusal was based on Sec. 3(k) objection. While dismissing the appeal, the Court noted that,

  • Claim amendment permissible at appellate stage: Amendment of claims in patent specification can be permitted at the appellate stage, both at the instance of the Applicant or if directed by the Court, so long as requirements of Sec. 59 are fulfilled, and the amended claims are within scope of the original as filed claims.
  • For this conclusion, the judge relied on Societe Des Produits Nestle Sa Controller of Patents and Designs, 2023/ DHC/000774, and noted that (i) Patents Act does not bar amendment of a patent specification at appellate stage, (ii) in appeal, High Court will have similar power as of Controller to direct amendment of patent application, and (iii) appeal is continuation of the original proceedings.
  • In facts of the case, amendment was not allowed since the effect would have been to widen scope of the original as filed claims, which was not permissible in
  • Section 3(k) ineligibility: Refusal in context of business methods is absolute, but in context of computer programs, use of words per se implies that a computer program demonstrating technical effect or an advancement, or a technical contribution could be
  • While dealing with applications involving business method, patent office must consider whether the application addresses a business or administrative problem and provides a solution for the same, and the following aspects ought to be considered:
    • "whether the invention is primarily for enabling conduct or administration of a particular business i.e., sale or purchase of goods or services;
    • whether the purpose of the invention is for claiming exclusivity or monopoly over a manner of doing business;
    • whether the invention relates to a method of sale or purchase of goods or services or is in fact a computer program producing a technical effect or exhibiting technical If it is the latter, it would be patentable but not if it is the former.

In adjudging whether a particular invention is a business method patent or not, regard can be had to the kind of modifications being carried out in a system, if any, which may involve greater convenience to a consumer by change of the architecture, elimination of a physical step and similar tests".

  • In the facts of the case, computer program is involved in the implementation of the invention but that is not the claimed invention, it is the method in which it is put into application which was sought to be patented. Court held the same to be a non-eligible business method.
  • Meaning of 'Common General Knowledge' in relation to inventive step assessment and meaning of 'Succinctness' of claims

In Agfa Nv & Anr. vs The Assistant Controller Of Patents And Designs, 2023 SCC OnLine Del 3493, dated 02 June 2023, the Court set aside the patent application rejection order of the Controller and directed the application to move to grant. On the various refusal grounds in the impugned order, the Court noted that,

  • Lack of inventive step and 'Common General Knowledge': The prior art D5 related to "application weight" and not "total dry weight" as required by independent Claim 1 of the patHence, the same was different.
  • Controller relied on "common general knowledge" along with D5 which rendered the invention as a workshop modiHowever, there was no reference of the 'common general knowledge' or why person skilled in the art would apply such 'common general knowledge'. Relying on Terrel, Court noted that "to rely on 'common general knowledge'... it is essential to specify the source of the said knowledge" and that such source should essentially be published before the priority date of the patent application. Further, "the fact that a theory or principle or knowledge has become common knowledge needs to be substantiated by some evidence" which could be in the form of references to 'common general knowledge' textbooks or research articles or standard documents.
  • Such knowledge need not be at the forefront of the mind of the person skilled in the art (Relying on Generics (UK) Limited Daiichi Pharmaceuticals Co. Ltd., [2009] R.P.C. 4).
  • Invention has to be considered as a whole and not broken down into isolated elements (Relying on Groz-Beckert KG Union of India & Ors.).
  • In this case, Controller failed to give any source of 'common general knowledge'.
  • Lack of clarity and succinctness u/Ss. 10(4)(c) and 10(5): While the Controller found some of the terms in the specification to be vague, Court after a detailed analysis of the specification found that each of the said "expressions/ terms have been adequately explained".
  • Succinctness of the claim, in absence of clarity in Indian Patent Manual, implies that claim should not be "unnecessarily lengthy" (relying on Australian Patent Manual of Practice and Procedure). While claim 1 was lengthy, it was not unnecessarily lengthy as it defined interlinked specific features and expressions. Hence, claims cannot be said to lack succinctness.
  • Failure to give reasons: Impugned order also failed to give reasons regarding lack of novelty or the inventive features in relation to claims 11 to 13 and merely gave conclusions.
  • The corresponding patent application was granted in several countries.
  • Further, Court also recommended the Office of the Controller General of Patents, Design and Trademarks to update the Manual of Patent Office Practice and Procedure, in order to provide better guidance on objections regarding lack of clarity and succinctness.
  • Unreasonably long delay in passing order post oral hearing is arbitrary, whimsical and against legislative intent.

In the judgement dated 08th December 2023, in Procter and Gamble Company v. Controller of Patents and Designs, 2023 SCC OnLine Del 7832, a Single Judge was dealing with an appeal from an order rejecting a patent application on grounds of lack of inventive step. The impugned order was passed by the Controller 4 years after the oral hearing of the subject matter. The Court set aside the impugned order and remanded the matter for reconsideration by a different officer since the manner of dealing with a patent application was found to be "extremely arbitrary and whimsical". Further, Court noted that,

  • When the judgement was reserved by the Controller, order should have been passed within a reasonable period (not beyond three to six months) even though no specific time is prescribed for the same post oral hearings. Controller took four years which leads to loss of life of the patent.
  • Impugned order was against the Patent Rules 2003: The Controller before passing the impugned order had sought certain clarification from the applicant, however even before the applicant could respond, the order was passed on the next working day. This is against Rule 12 of the Patent Rules, which provide the applicant with a period of six months to respond to such information sought under 8(2) by the Controller.
  • Secs 14 and 21 of the Patents Act along with Rule 24(B) of the Patent Rules prescribe strict timelines "right from the filing of request of examination, preparation of the examination report by the examiner of patent, consideration of the examiner's report by the Controller, issuance of statement of objections, reply to statement of objections and the time for putting the application in order for grant". Therefore, the intention of the legislature was to ensure that "no unnecessary delays are caused in the process of grant of patents".
  • Directions to Patent Office, due to unreasoned orders passed by Controllers.

In, Huhtamaki Oyj And Anr vs Controller Of Patents, 2023 SCC OnLine Del 3272, dated 26 May 2023, a Single Judge was dealing with an appeal from an order rejecting a patent application on grounds of lack of inventive steps "without even a word of independent reasoning, merely reproducing the contents of the hearing notice issued to the appellant". The Court noted that,

  • The Assistant Controller "has completely abdicated the duty cast on her to dispassionately consider the petitioner's application".
  • There is a "endemic problem in the office of the Controller of Patents and Designs reflected in" rejection of "patent applications by merely reproducing the objections issued to the proposed patentee, without even a word of reference to the reply" filed by patentee in response to such objection and without application of
  • Patent term is 20 years, computed from date of application and not date of grant. Therefore, such unreasoned orders rejecting the patent applications will lead to the patentee being involved in unnecessary litigations thereafter, which leaves hardly any residual life for the patent if granted.
  • Accordingly, the Court made the following directions to Controller General of Patents and Designs, which if not strictly followed shall invite disciplinary action,
    • "Every order which either
      • rejects an application seeking grant of a patent, or
      • accepts, or rejects, any pre or post-grant opposition to such applications,

shall be reasoned and speaking, and shall deal systematically and sequentially with each objection that requires consideration, whether contained in the FER, or the hearing notice, or in any preor postgrant opposition, and provide reasons as to why the objection is sustained or rejected.

  • If there is no preor post-grant opposition to the patent, and objections are raised only by the office of the Controller itself, in the FER or Hearing Notice, and the reply of the applicant in response thereto is found to be worthy of acceptance, then, too, the order granting the patent should briefly state why the applicant's reply is accepted, as this would facilitate any post-grant opponent, who seeks to oppose the grant of the patent, or seek its revocation, after the patent is granted.
  • The requirement of a reasoned and speaking order would obviously not apply if the patent, as sought, is granted, and there is no objection in the FER or hearing notice, or preor post-grant opposition thereto."
  • Objections cannot be raised for first time in the impugned order or during hearing.

In Adama Makhteshim Ltd V. The Controller of Patents, C.A.(COMM.IPD-PAT) 167/2022, dated 01 May 2023, the Court set aside the order of the Controller by which the patent application was rejected on ground of Sec. 10(4)(a) of the Patents Act.

The Court noted that, "Despite the specification being found non-compliant with Section 10(4) (a), it is worth noting that this objection was not raised in either the FER or the Hearing Notice. The first time that Appellant was confronted with this objection was in the impugned order, which raises concerns over the fairness of the process. Although a hearing was provided, it does not absolve the Respondent of their obligation to communicate all objections prior to refusal. Therefore, the Appellant's right to due process has been violated". Court noted that procedural irregularities vitiated the impugned order. Accordingly, the order was set aside and matter was remanded for fresh consideration.

Court also noted that "since the orders of the Controller under Section 15 of the Act are subject to judicial review in appeal, it would be advisable for the Controller to examine all grounds of objection while deciding an application, even if the application is found to be non-patentable on any one of the preliminary or technical grounds. This approach would expedite the process of granting patents by allowing the Courts to assess the patentability of inventions if the technical objection is overruled. Only if the merits of the claims and issues relating thereto are interlinked with technical grounds, this approach may not be feasible, and an observation should be recorded to that effect. However, in situations where the grounds of refusal mentioned in the Hearing Notice are independent and can be examined as such, a comprehensive order should be passed addressing all of the objection".

  • Another unreasoned order with new objection during hearing, another order set aside.

In Man Truck Bus SE v. Assistant Controller of Patents and Designs, 2024 SCC OnLine Del 874, dated 09 February 2024, the Court dealt with Controller's order rejecting a patent application. The Court relied on the principles in the following judgments,

  • Agriboard International LLC v. Deputy Controller of Patents and Designs (C.A. (Comm. IPD-PAT) 4/2022), observing that the said decision notes that "application of mind and recording of reasoned decision are basic elements of natural justice and scrupulous adherence to these principles would be required while rejecting patent application". Further, it was also pointed there that "Controller has to analyse as to what is existing knowledge and how the persons skilled in the art would move from existing knowledge to the subject invention".
  • Otsuka Pharmaceuticals Co. Ltd. v. The Controller of Patents (C.A. (Comm. IPDPAT) 2/2022) which stressed that all outstanding objections must be communicated in the hearing notice and objections cannot be raised during hearing thus depriving opportunity to
  • Perkinelmer Health Sciences & Ors. v. Controller of Patents (C.A. (Comm. IPDPAT) 311/2022) which had reaffirmed that "raising new grounds at the time of hearing was impermissible".

Applying the above principles, the court held that the impugned order faltered on the following aspects: firstly, it did not provide any discussion as to how the teachings of the prior arts would make the invention obvious, and no analysis was offered; secondly, objection relating to one of the prior arts i.e., D5 which formed the fulcrum of the conclusion for the refusal order, was never asserted or raised in the notice of hearing or any time prior to the same.

Accordingly, the impugned order was set aside, and the matter was remanded for fresh consideration.

  • Claim amendment broadened scope of original claim and public clinical trial information did not demonstrate enhancement of efficacy, leading to rejection of appeal.

In Ovid Therapeutics, Inc. v. Assistant Controller of Patents And Designs, 2024 SCC OnLine Del 875, dated 09 February 2024, where the patent application was rejected on grounds of (i) Secs. 3(d) and 3(e), (ii) lack of inventive step, (iii) insufficiency of disclosure, and (iv) claim amendment in breach of Sec. 59. The Court while dismissing the appeal, noted that,

  • Claim amendment: Since the amended claim 1 omits the name of the disease, there is expansion of scope of the subject patent which is impermissible.
  • Section 3(d) and enhanced efficacy: Requisite data or results of lab experiments demonstrating enhanced efficacy should generally be disclosed in the complete However, "additional data, such as data from Clinical Trials which becomes available, only post the filing of the patent application" may be considered by the patent office and by the Court.
  • The composition, in facts of the case, was merely a Results of phase 3 trials, which were publicly available and necessary to determine efficacy, were not placed on record. As per publicly available results of Phase 3 clinical data, Court found that subject invention lacked therapeutic efficacy.

Other Patent Infringement Disputes

  • Tests in Patent Infringement Suits

In Rxprism Health Systems Private Limited & Anr. v. Canva Pty Ltd & Ors., 2023 SCC OnLine 4186, the Court was dealing with an infringement action brought by an Indian start-up. The Court noted that,

  • Tests in patent infringement suit: The broad settled position is: "a) That the claims have to be construed in a purposive manner. On the basis of the claims of the patent specification the Defendant's product is to be compared for assessing infringement; b) In the process of comparison, trivial variations would not matter, and the Court has to assess if the Defendant's product is producing the same effect or is 'equivalent', to the invention claimed and disclosed in the Patent. c) The comparison between the Plaintiff's product and the Defendant's product can only lend support for the purposes of understanding of the technology and the features of the two However, the Product vs. Product comparison shall not be determinative of infringement. It is the Granted Claims vs. Product comparison that is determinative of patent infringement".
  • Applying the above principles, the Court found that the Defendants were, prima facie, infringing the Suit patent.
  • In context of invalidity challenge by the Defendants, at the interim stage, the Court recorded its finding that "the Plaintiff's patent is inventive over the said closest prior arts". Hence, no credible or sustainable challenge was found to be raised at the interim stage.

Accordingly, the Court restrained the Defendants "from making available their Canva product with the 'Present and Record' feature, which infringes the Plaintiff's suit patent... or use any other feature that would result in infringement of the Plaintiff's patent...". Further, since the Defendants were based in Australia and had no Indian assets nor a physical business in India, Court also directed deposit of INR 50 lakhs in form of FDR as security for Plaintiff's claim for past use of the infringing feature in India. Cost of INR 5 lakhs was also imposed considering the facts of the case and the language in the Written Statement against the Plaintiff.

  • Damages: Patent infringement suit decreed for sum of INR 81, 44, 925/-, after Defendant chooses to stay away from proceedings.

In post-trial judgement dated 20 October 2023, in Strix Ltd. v. Maharaja Appliances Ltd., 2023 SCC OnLine Del 6763, the High Court awarded INR 81, 44, 925/-, comprising 50 lakhs notional damages, in favour of the patentee, who had filed the infringement action in 2009. The Court noted that in case where evidence is not led, damages have to be notional and are to be considered on a reasonable/ fair basis and Court can make broad assessment of profits, on the basis of the evidence on record and publicly available records. Interim injunction was granted on 10 September 2009 and the Suit Patent expired during pendency, rendering relief of permanent injunction infructuous. The Court noted that,

  • Defendant's conduct: Defendant tried to delay the proceedings by seeking repeated adjournments, and deliberately chose to stay away from the proceedings to ensure it is not required to produce its accounts. Costs had been imposed twice on the Defendant, its evidence was closed, and Defendant was proceeded ex parte. In August, 2014, Defendant's counsel took discharge and the matter was pending
  • Invalidity and exhaustion not established: Court independently examined the cited prior arts, finding one of them sufficiently different and other two as post the priority date of the Suit patHence, patent was valid. Defendant failed to establish exhaustion and suppression and did not lead evidence on issue of non-infringement.
  • Decree of rendition of accounts not feasible: Court noted that Defendant would again avoid court proceedings and hence monetary compensation deserves to be awarded.
  • Notional Damages: Since date of serving of legal notice, 27 September 2007, Defendant has sold infringing product for 2 years till grant of interim injunction and monetarily gained therefrom.
  • Relying on Hindustan Unilever Limited v. Reckitt Benckiser India Limited, Koninklijke Philips Electronics N.V. v. Rajesh Bansal and Ors., and Rule 20 of the Delhi Court IPD Rules 2022, it was noted that various aspects such as sales made by the Defendant, market share of the Defendant, royalty which the Defendant would have to pay if the infringing product had to be a licensed product, have to be considered before awarding damages.
  • Relying on UK Court of Appeal's Gerber Garment Technology v. Lectra Systems Ltd. [1997] R.P.C. 443, noted that if patentee cannot prove the loss, it is permissible to assess the same on a reasonable royalty basis. Where the patentee is a manufacturer of the patent product, reasonable profit that the patentee would have had earned if the infringing products were in fact sold by the patentee would be reasonable measure.
  • Once infringement is established, the Court can infer that reasonable invasion of the patentee's monopoly would cause damage to the patentee and accordingly, a fair and reasonable measure can be adopted by the Court for computing the damages.
  • Plaintiff's witness has not given any evidence of damages and the Defendant's sales or profits are not disclosed on Defendant cannot be at an advantage after having chose to stay away from the proceedings.
  • Court found that Defendant's public stand is that it is one of India's leading home appliances companies with over 60 products, has 18 product categories as per its website, and claims to have annual turnover of INR 180 crores as per press clipping dated 12 October 2007. Dividing this turnover amongst broadly 18 categories, gives 10 crores and considering that infringing kettles may not be most expensive, the annual sales of kettles were taken at INR 5 crores and divided into two models of kettles sold by Defendant, amounting to sales of 5 crores over 2 years for the infringing kettle model. Thereafter, based on invoice placed on record by Plaintiff, the sale price of one kettle is INR 1400 and the average price of Plaintiff's patented invention is INR 270. Based on this, Court estimated that approximately 35,700 units were sold amounting to INR 96 lakhs as profits. Based on this, damages of INR 50 lakhs were awarded in favour of the Plaintiff. Cost of the 15-year long litigation incurred by Plaintiff amounting to INR 31,44,925/was also awarded.
  • Parties have duty of candour and must approach Court with clean hands, otherwise equitable relief will be denied.

In the judgement dated 14 December 2023, in Freebit AS v. Exotic Mile (P) Ltd., 2023 SCC OnLine Del 8213, the Court re-iterated the principle of full disclosure of all relevant and material facts in the suit that is filed by the Plaintiff. The Court noted that,

  • As per the High Court's Patent Suit Rules, 2022, "it is necessary, to the extent possible, for a plaint to include details of corresponding foreign patent applications, as well as information relating to any orders passed by a Court or Tribunal concerning the same or substantially similar invention as asserted in the Suit". Even under CPC, the Plaintiff has a duty to file those documents which are adverse to the case of the Plaintiffs. In the present case, "in respect of some of the countries, where the suit patent has either been revoked, refused, abandoned, lapsed, have been shown as either pending or granted". Further, "minor lapse in mentioned an incorrect status" could have been ignored by the Court but here "there is gross suppression and misrepresentation of material facts, which would have a bearing on the case". The information supplied in Form 3 was also incorrect.
  • The Plaintiff ought to have made full disclosure in its suit. This disclosure is not limited to facts that strengthen its case but also all the information that can potentially aid in a comprehensive and fair adjudication of the The duty of disclosure encompasses not only the submission of all documents pertinent to the current litigation but also an obligation to inform the Court of any previous litigations between the parties, any previous litigations concerning the suit patent, along with their respective outcomes.
  • Reliance was placed on FMC Corporation And Ors v. GSP Crop Science Private Limited, [2022 SCC OnLine Del 3784], to hold that 'suppression and misrepresentation' is one of the grounds available to a Defendant to challenge the grant of an interim injunction.
  • Court also found two UK judgments which seriously impinged on the validity of the Suit Patent. No prima facie case was established since the Suit Patent was thus vulnerable to revocation.
  • In light of the factual circumstances, the Court dismissed the interim injunction application and imposed cost of INR 5 lakhs upon the Plaintiff.
  • Meaning of Credible challenge and where a technical body has held patent to be valid in appeal, that itself make a case of prima facie validity.

In Pharmacyclics LLC & Anr. v. Hetero Labsited & Ors. and Laurus Labs Limited v. Union of India & Ors. etc. (batch matters), 2023: DHC: 9246, dated 21 December 2023, the Single Judge was dealing with grant of interim relief in relation to the anti-cancer drug Ibrutinib. The judgment dealt considerably with the validity of the judgment passed by the IPAB which had overruled the order of the Controller deciding the post-grant opposition in favour of the opponent and had thus restored the patent as valid. Defendants had argued that all orders passed by the IPAB during the "twilight period" from 21 September 2019 (when tenure of the IPAB chairperson had ended) to 27 November 2020 (when Supreme Court had held vide its judgment that tenure of IPAB chairperson had in fact ended) were of no value since the chairperson was "coram non judice". Court refused this argument and further noted that,

  • Scope of Writ Court: The judgement of IPAB was challenged by way of writ. Court noted that "writ court does not sit in appeal over the decision under challenge, passed by the hierarchically lower judicial or quasi-judicial authority" and "scope of judicial review is restricted to the manner in which the decision under challenge has been arrived at, rather than the merits of the decision itself".
  • No case for grant of stay made out in relation to the IPAB The IPAB rendered a well-considered decision, offering cogent and convincing reasons. A stay would mean undoing restoration of the patent and reviving the revocation and the present was not an exceptional case meriting such interference.
  • Meaning of Credible Challenge: Holding that credible challenge against patent validity is not made out, the judge noted that credible challenge requires "a fairly high standard to be met. Where the defendants' submissions merely suggest a possibility of the validity of the suit patent as being questionable, it cannot be said that a credible challenge has been launched".
  • Further, court noted that the judgment of "IPAB itself makes out a prima facie case of validity of the Suit Patent".
  • Actual publication is required for prior art to be prior published: An article which is sent for publication without "expectation of confidentiality" does not become a prior art from the date it is sent for publication merely because of The actual publication date matters. Hence, such article cannot be pressed into service for invalidity challenge basis the date on which it was sent out for publication.

While granting injunction, considering the importance of the drug, the Court permitted Defendants to exhaust the stock available with them subject to placing details of such stock in an affidavit.

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