2012 (9) TMI 1129 - HC - Companies Law

Summary

Issues Involved:
1. Whether the manufacture, marketing, and sale of ERLOCIP by the defendant infringe the plaintiffs' Indian Patent 196774?
2. Whether the Indian Patent 196774 is liable to be revoked based on the grounds raised in the written statement and counter-claim of the defendant?
3. Whether the plaintiffs are entitled to permanent injunction as prayed for?
4. Whether the defendant/counter-claimant proves that the plaintiffs' subsequent US Patent 6900221 indicates that the compound of claim No. 1 of the suit patent is a mixture of two Polymorph A and B Compounds and needs to be separated to perform and get the claimed compound for acceptable efficacy, and its effect on the plaintiffs' patent?
5. Relief.

Summary of Judgment:

Issue 1: Infringement of Patent
The plaintiffs failed to establish that the defendant's product, ERLOCIP, infringes their patent IN'774. The plaintiffs did not provide sufficient evidence to show that the defendant's product corresponds exactly with the patented compound Erlotinib Hydrochloride. The court found that the plaintiffs' product, Tarceva, is a Polymorphic version B of the compound and not the same as the patented compound. The plaintiffs did not discharge their burden of proof to show infringement, and the court applied the Catnic approach, which considers the role of variants in determining infringement. The plaintiffs' indirect route of showing infringement through admissions and product labeling was insufficient. Therefore, the issue was decided in favor of the defendant.

Issue 2: Revocation of Patent
The defendant raised several grounds for revocation, including lack of inventive step, violation of Section 3(d), and non-disclosure under Section 8. The court found that the defendant did not discharge the burden of proof to show obviousness or lack of inventive step. The court also found that the defendant failed to establish that the suit patent was a new form of a known substance under Section 3(d). However, the court found that the plaintiffs violated Section 8 by not disclosing the subsequent US patent application. Despite this, the court exercised its discretion not to revoke the patent solely on this ground. Therefore, the issue was decided in favor of the plaintiffs.

Issue 3: Permanent Injunction
Given the findings on Issue 1, the plaintiffs were not entitled to a permanent injunction. The court found that the defendant did not infringe the plaintiffs' patent, and therefore, no injunction could be granted. The issue was decided against the plaintiffs.

Issue 4: Subsequent US Patent 6900221
The court found that the defendant proved that the plaintiffs' subsequent US Patent 6900221 indicated that the compound of claim No. 1 of the suit patent is a mixture of two Polymorph A and B Compounds. The court also found that there was a need for separation to achieve acceptable efficacy, and this had an effect on the plaintiffs' patent. The issue was decided in favor of the defendant.

Issue 5: Relief
In light of the findings on the other issues, the court dismissed both the suit and the counter-claim. The plaintiffs were not entitled to any relief, including damages or a permanent injunction. The issue was decided against the plaintiffs.

Conclusion:
The suit (CS(OS) No. 89/2008) and the counter-claim (C.C. No. 52/2008) were both dismissed, with no order as to costs.