2019 (1) TMI 1980 - SC - Indian Laws

Suit for injunction restraining infringement of an existing and valid patent - seeking permanent injunction against the Defendants from using the trademark BOLGARD and BOLGARD II brand cotton technology - seeking to restrain the Defendants from selling and or using seeds/hybrid seeds bearing the patented technology, infringing the registered patent of the Plaintiffs, along with rendition of accounts - HELD THAT - Section 64 of the Act provides for revocation of patent based on a counter claim in a suit. It necessarily presupposes a valid consideration of the claims in the suit and the counter claim in accordance with law and not summary adjudication sans evidence by abstract consideration based on text books only. The Code of Civil Procedure provides a detailed procedure with regard to the manner in which a suit instituted Under Section 9, including a counter claim has to be considered and adjudicated. The Code mandates a procedure by settlement of issues, examination and cross examination of witnesses by the parties, including discovery/inspection of documents, culminating in the hearing of the suit and decree. A suit can be disposed of at the initial stage only on an admission inter alia Under Order 12 Rule 6 or when the parties are not in issue Under Order 16 Rule 1 and the other grounds mentioned therein, none of which are applicable herein. The Division Bench ought not to have disposed of the suit in a summary manner by relying on documents only, extracted from the public domain, and not even filed as exhibits in the suit, much less examination of expert witnesses, in the facts of the present case. There is no gain saying that the issues raised were complicated requiring technological and expert evidence with regard to issues of chemical process, biochemical, biotechnical and microbiological processes and more importantly whether the nucleic acid sequence trait once inserted could be removed from that variety or not and whether the patented DNA sequence was a plant or a part of a plant etc. are again all matters which were required to be considered at the final hearing of the suit. The Division Bench ought to have confined itself to examination of the validity of the order of injunction granted by the learned Single Judge only. But we are not inclined to remand the matter for that purpose to the Division Bench as we are satisfied in the facts and circumstances of the case that the nature of the injunctive relief granted by the Single Judge was in order and merits no interference during the pendency of the suit. The order of the Division Bench is set aside - Appeal disposed off.

Summary

Issues Involved:
1. Validity of the patent and infringement claims.
2. Applicability of Section 3(j) of the Patents Act.
3. Relationship between the Patents Act and the Protection of Plant Varieties and Farmers' Rights (PPVFR) Act.
4. Grant of interim injunction and obligations under the sub-licence agreement.
5. Requirement for expert evidence in patent disputes.

Detailed Analysis:

1. Validity of the Patent and Infringement Claims:
The Plaintiffs sought a permanent injunction against the Defendants for using the trademark "BOLGARD" and "BOLGARD II" brand cotton technology, alleging infringement of their registered patent No. 214436. The Plaintiffs had a sub-licence agreement with the Defendants, which was terminated due to disputes over licence fee/trait value payments. The Defendants filed a counterclaim for revocation of the patent under Section 64 of the Patents Act, arguing that the patent claims were invalid under Section 3(j) of the Act. The Single Judge observed that the issues required formal proof and expert opinion, and thus did not merit comments at the interim stage. However, the Division Bench upheld the Defendants' contention regarding patent exclusion under Section 3(j) and allowed the counterclaim, which led to the Plaintiffs' appeal.

2. Applicability of Section 3(j) of the Patents Act:
The Defendants argued that the patent claims were invalid under Section 3(j), which excludes plants and seeds from patentability. They contended that the Plaintiffs' claims were essentially biological processes and not patentable. The Division Bench agreed with this view, but the Supreme Court found that the Division Bench should not have summarily adjudicated this complex issue without a full trial and expert evidence.

3. Relationship Between the Patents Act and the PPVFR Act:
The Defendants claimed protection under the PPVFR Act, arguing that the Plaintiffs' claims were more suited for registration under this Act rather than the Patents Act. The Plaintiffs countered that their patent involved a man-made DNA construct, which did not fall under the PPVFR Act. The Supreme Court noted that the relationship between the two Acts and the applicability of Section 3(j) required a detailed examination at trial with expert evidence.

4. Grant of Interim Injunction and Obligations Under the Sub-Licence Agreement:
The Single Judge had granted an interim injunction, requiring the parties to adhere to their obligations under the sub-licence agreement during the pendency of the suit. The Division Bench's decision to summarily dismiss the suit and counterclaim was found inappropriate by the Supreme Court, which restored the Single Judge's order and remanded the suit for a full trial.

5. Requirement for Expert Evidence in Patent Disputes:
The Supreme Court emphasized the need for expert evidence in complex patent disputes, particularly those involving biochemical and biotechnological processes. The Court criticized the Division Bench for summarily adjudicating the patent's validity without such evidence, highlighting that issues like the nature of the patented DNA sequence and its integration into plants required detailed examination through expert testimony.

Conclusion:
The Supreme Court set aside the Division Bench's order, restored the Single Judge's interim injunction, and remanded the suit for a detailed trial. The Court underscored the necessity of expert evidence in resolving the complex issues involved and urged the parties to cooperate for an early disposal of the suit.