2013 (5) TMI 141 - HC - Companies Law

Infringement of the patent - suit for injunction - whether it would be appropriate for the Division Bench to require a revocation proceeding initiated by a third party before the IPAB pertaining to grant of patent vide Patent No.196774 in favour of Roche to be deferred till the cross-appeals are decided - Held that - As per Section 8 with respect to non-disclosure of information in the context of the word may used in Section 64 of the Patents Act, 1970, in the inter-se disputes between Roche and Cipla notwithstanding Cipla having made good the point with respect to the patent in question of Roche having filed various applications in various jurisdictions abroad including India which were not disclosed to the Controller of Patents, the learned Single Judge declined to revoke the patent in favour of Roche granted by the Controller of Patents. With respect to the claim of injunction by Roche the LD. Single Judge has held that the drug manufactured by Cipla does not violate the Patent No.196774 and since the claim for grant of patent in the second polymer B stood rejected by the Controller of Patents, the Single Judge has held that the question of patent violation with respect to said polymer would not arise. The normal rule of law is that unless a power is specifically vested in a Court to restrain a party from prosecuting remedy before any Judicial Fora, only in exceptional circumstances should such an order; akin to an ante-suit injunction, be passed. But no such power under the Patents Act, 1970 exists. That apart, it may happen that seeking revocation of a patent before a Court, the defending party may allege non-disclosures contemplated by Section 8, which may fall short of the discretion to be exercised by the Judge. But, a third party litigating on the same issue may plead non-disclosures having a span much more than the non-disclosure alleged by some other party. Meaning thereby, the span of non-disclosure may vary between the litigating parties. Under these circumstances the unreasoned one line interim order dated April 01, 2013, requiring proceedings before IPAB between Roche and the applicant to be deferred beyond May 15, 2013 needs to be recalled.

Summary

Issues:
1. Alleged patent infringement and permanent injunction sought by 'Roche' against 'Cipla'.
2. Counter claim by 'Cipla' for revocation of the patent granted to 'Roche'.
3. Interpretation of Sections 8 and 64 of the Patents Act, 1970 regarding non-disclosure of information.
4. Decision on the claim of injunction by 'Roche' against 'Cipla'.
5. Consideration of deferring revocation proceedings initiated by a third party before the IPAB.

Analysis:
1. The case involved 'Roche' suing 'Cipla' for patent infringement and seeking a permanent injunction. 'Cipla' counterclaimed for the revocation of the patent granted to 'Roche' on the grounds of non-infringement. The patent in question was related to a Hydrochloride drug used in cancer treatment, referred to as 'Polymer A', with 'Roche' having another patent application for 'Polymer B', which was distinctively different and not granted.

2. 'Cipla' raised a defense under Sections 8 and 64 of the Patents Act, 1970, alleging non-disclosure of information by 'Roche' regarding similar patents sought in other jurisdictions. The Single Judge declined to revoke the patent despite 'Cipla' establishing non-disclosure of relevant information by 'Roche'.

3. The Single Judge ruled that the drug manufactured by 'Cipla' did not violate the patent held by 'Roche', as the claim for the second polymer 'B' had been rejected by the Controller of Patents. The question of patent violation did not arise in this context.

4. The main issue before the court was whether to defer revocation proceedings initiated by a third party before the IPAB concerning the patent granted to 'Roche'. The court noted that specialized tribunals should be allowed to decide matters within their jurisdiction, and there was no specific provision in the Patents Act, 1970, to restrain parties from pursuing remedies before judicial fora.

5. The court decided to recall an interim order requiring the deferral of proceedings before the IPAB, allowing 'Roche' and the third-party applicant to continue their proceedings. The decision highlighted the importance of specialized tribunals and the varying degrees of non-disclosure that different parties may allege in patent revocation cases.