In yet another instance of issuance of ex-parte injunctions,
the Delhi High Court ("DHC") recently issued two such injunctions in
Symed Laboratories Pvt. Ltd. favour. We have consistently raised the
issue that patents and ex-parte injunctions strike a
rather discordant note. Shamnad has written about it here; Prashant here and Shan here.
Prashant had in his previous post discussed issuance of an ex-parte injunction against Symed
Laboratories ("Symed"). In the recent cases involving Symed,
Justice Kailash Gambhir of the DHC issued not one - but two, ex-parte injunctions in Symed's favor and against Optimus Pharma Pvt. Ltd. (and others) and
Sharon Bio-Medicine Ltd. (and others). Hat tip: Sreenath of Symed Labs.
Pvt. Ltd.
The cases involved two patents: 213062 ("062
patent") and 213063 ("063
patent"). Both patents were related to linezolid compounds; The 062 patent involved "Novel intermediates for
linezolid and related compounds," and the 063 patent was for
"A novel process for the preparation of linezolid and related
compounds."
The
operative part of the judgments (both are very similar) is reproduced
below:
"....Arguing for the stay
application, Ms. Pratibha M. Singh, learned counsel for the plaintiff
submits that the plaintiff is the holder of two patents; IN 213062
and IN 213063...The counsel also submits that the novel processes
developed by the plaintiff have overcome the drawbacks associated with the
previously known processes and are commercially viable for preparing Linezolid
and related compounds.
Counsel furthe submits that the
plaintiff came to know in February 2012 that the defendants are selling and
offering for sale linezolids in India and in order to confirm this, the
plaintiff got the samples of the defendants tested from their own research
centre and the result showed the presence of the same process of the plaintiff
as contained in patent no. IN 213063. Counsel thus submits that the
defendants have been using the said process of the plaintiff in which the
plaintiff used a unique process of the combination of certain intermediates and
is protected by the patent. Counsel thus states that
the defendants be restrained from using the said process of which the
patent has been granted to the plaintiff. Counsel also submits that at
least the plaintiff be protected with regard to the unique compound contained
in claims 12 and 20.
After having heard the learned
counsel for the plaintiff, I am of the considered view that the plaintiff has
made out a prima facie case in their favour and refusal to grant ex-parte ad
interim injunction will cause prejudice to the rights of the plaintiff.
The balance of convenience also lies in favour of the plaintiff and if an
ex-parte ad interim injunction is not granted in favour of the
plaintiff irreparable loss and injury would be caused to the
plaintiff.
Accordingly the defendants,
their directors, servants, agents, employees, franchisees, and representatives
or any one acting on their behalf are restrained from manufacturing the product
Linezolid in a manner so as to result in infringement of the plaintiff's
registered patent IN 213063."
Before I detail out some issues
that raise concern, a few details about the patents at issue. Both the
'062 and '063 patents were granted in India on 19.12.2007. Counterparts
of the '062 and the '063 patents have been granted at the United States Patent
Office and the European patent office. Hence both patents are not
recent patents, rather they have been in existence for some time now, and are
likely to be strong patents.
Shamnad, Prashant and Shan have
raised multiple issues against grant of ex-parte injunctions in patent cases.
I would like to highlight another issue.
Section 104A of the Patents Act (as amended) provides for: Burden of proof in case of suits concerning
infringement(1) In any suit for
infringement of a patent, where
the subject matter of patent is a process for obtaining a product, the
court may direct the defendant to prove that the process used by him to obtain
the product, identical to the product of the patented process, is
different from the patented process if,
(a) the subject matter of the patent is a process for
obtaining a new product; or (b)
there is a substantial likelihood that the identical product is made by the
process, and the patentee or a person deriving title or interest in the patent
from him, has been unable through reasonable efforts to determine the process
actually used:
Provided that the patentee or a
person deriving title or interest in the patent from him, first proves that the product is identical to the
product directly obtained by the patented process......
This section is another reason
why ex-parte injunctions should not be granted in patent cases. Here, the
patents involve a method to prepare Linzolid products, a process. The
defendants were not given an opportunity to prove that the process used by the
defendant/s was different from that of the plaintiff's patented process.
Symed got the samples (of the
defendants products) tested from their own research center. These samples
tested positive and hence the Symed assumed that the product was made using
their patented process.
Prashant had in his previous post had discussed guidelines issued by the Supreme Court
in ex-parte injunction cases. This judgment is no different.
Some deficiencies in the judgment are highlighted below:
(i) There is no discussion
on how the denial of an ex-parte order would cause irreparable injury to the
Plaintiff.
(ii) The ‘Claims’ of the patent
are not even reproduced. There is just a statement about claims 12 and 20
being important; and
(iii) The Court does not
explain how it has assumed jurisdiction especially when the primary defendant
is situated in Hyderabad and not Delhi. In both cases, it is the
defendant number 3 who is situated in Delhi!!
Conclusion:
Although not explicitly mentioned in the order, the fact that both the
patents were comparatively older, and counterparts had been granted in other
major jurisdictions, seemed to have weighed more. However, in patent cases, it is rarely clear at the beginning of
the case, that the patent is both valid and infringed. Hence Courts
should not rush to grant ad-interim, ex-parte injunctions at the mere asking.
My take on this case is that
the more Indian party v. Indian party patent cases we see, more objective
would be the judgments.
Posts
6 comments:
DHC is known for giving Ex-parte injunctions liberally.
This is the only reason almost all Plaintiffs prefer DHC than any other High Courts or District Courts for IP matters in India.
As a practising Lawyer from Bombay High Court I can assure you Bombay High Court might not have heard this case unless a Notice is served on the Defendant or all Defendants.
I agree that this may be Forum Hunting or one may can it an abuse of the process of Law.
The Judiciary should be more cautious about it and only in
rare cases ex-parte Orders should be granted and with some good reason to be recorded for it.
Thank you Rajiv for bringing to the notice of your readers these ex parte ad interim orders passed by the DHC. I am sure that the provision of Section 104A must not have been brought to the notice of the DHC. Besides DHC is known for forum hunting and these cases have replicated. The greatest problem with the courts in India and I know more about DHC is that the arguments in the interim injunction applications are not heard for many months together and in some cases even years, while the CPC says that wherever the ex parte ad interim injunction order is passed it would be the endeavour for the court to decide the interim injunction application within the period of 30 days of the grant of the ex parte injunction order, otherwise the reasons are to be recorded. I am yet to see any order of DHC recording any reasons even in a single case.
Dear Rajeev:
The US is relooking at issuance of injunctions - look at the latest Shionogi v. Lupin dispute for Fortamet (Metformin) drug.
While here in India, we are falling prey to forum shopping/ ex-parte injunctions and what not..
From what we hear, even in the other matter of Erlotinib at Chennai between Roche v. Intas, while Intas was successful at the single judge bench, Roche has still gone ahead and is litigating at the Division bench level -that when they have not succeeded in the same Court at a Div bench for the SAME patent.
Freq. Anon.
This font is ugly!
Over the years this had been clearly visible that Indian courts have different yardsticks when it comes to defending patent rights of domestic companies. Obviously for MNCs who invest millions of dollars in drug discovery - Indian courts found no reason to defend their IP.
Where can i find a copy of the two injunctions granted?
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