Justice Ravindra Bhat frames ‘issues’ in Nexavar patent infringement dispute before the Delhi High Court;


As reported by us earlier Justice Ravindra Bhat of the Delhi High Court has managed to convince both Bayer and Cipla to expedite the Nexaver patent infringement suit directly to trial without hearing arguments on the interim injunction application. On the last date of hearing i.e. 16th November, 2010 the Court framed the ‘issues’ to be decided during the trial. In order to put things in perspective I should point out that in the normal course of events it would have been atleast 24 months before the Delhi High Court got down to framing issues. Given the fact that this case was filed only in March, it is commendable for issues to have framed in a relatively short time-span.

The Court has also appointed two experts, in consultation with both parties, under Section 115 of the Patents Act, which allows for ‘scientific advisors’ to assist the Court in patent matters. The exact terms of reference to the experts are to be decided on the 9th of December, 2010. We will hopefully bring you an update on this order, provided the Delhi High Court actually decides to start updating its website on a regular basis.

The order framing the issues and appointing the experts has been pasted below; it is interesting to note that Cipla has made Section 8, i.e. suppression of corresponding foreign patent applications one of the main grounds of challenge to the patent’s validity:

IN THE HIGH COURT OF DELHI AT NEW DELHI
CS(OS) 523/2010

BAYER CORPORATION and ANR ….. Plaintiffs
Through : Sh. S.C. Agarwala, Sr. Advocate with Sh. Sanjay Kumar and Ms. Arpita Sahwney, Advocates.
versus
CIPLA LTD ….. Defendant

Through : Ms. Prathiba. M. Singh, Ms. Saya Choudhary and Ms. Meghna Sudha Panda, Advocates.

CORAM:
HON’BLE MR. JUSTICE S. RAVINDRA BHAT

O R D E R
16.11.2010

After hearing counsel and with consent, following issues are framed:
1. Whether the defendant?s drug infringes Plaintiff No.1?s Patent No. 215758;
2. Whether Plaintiff No.1?s patent is invalid and liable to be revoked on any of the following grounds:
(a) Subject matter of the patent is obvious in nature and does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim ? lack of inventive step under Section 64(1)(f);
(b) Subject matter of the patent is not patentable under the Act ? claims not patentable under Section 3(e) read with Section 64(1)(k);
(c) The subject of any claim of the complete specification is not an invention within the meaning of the Act ? Section 64(1)(d);
(d) Subject matter of the patent is not sufficiently and fairly described insufficient description under Section 64(1)(h);
(e) Applicant failed to comply with Section 8 ? ground under Section 64(1)(m);
(f) The patent was obtained on a false suggestion or representation ? Section 64(1)(j);

3. Relief.
Learned counsel for the parties, after some hearing agreed that the following experts may be nominated as Scientific Advisors under Section 115 of the Indian Patents Act read with Order 26 Rule 10A, to assist the Court:
(a) Dr. S.K. Kulshreshtha, Ph.D (Chemistry),[Cont. Add: 43/2C, Sector-2, DIZ Area, Gole Market, New Delhi-1; 23368795, 09990720175]
(b) Ms. Vijaya Gopal, Ph.D (Life Sciences) [ W212, Centre for Cellular and Molecular Biology, Uppal Road, Hyderabad-500007, A.P., India; 040-27192552, 09989494037]
List on 09.12.2010, for settling points of Reference for the above two experts and also settling their, fees and for further directions.
S. RAVINDRA BHAT,J
NOVEMBER 16, 2010

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

3 comments.

  1. Anonymous

    PR:

    Intersting development indeed !!

    Would you agree that Sec 13(4) of the Patent Act 1970 (as amended in 2005) creates space for this type of innovation?

    Can this type of departure take place in a suit for infringement of trademark keeping in view sec 31and sec 124 of the Trade Marks Act 1999?

    Regards
    Reading Spicy IP since 2005….

    Reply
  2. Prashant Reddy

    Hi Anon since 2005,

    Why do you draw the link between 13(4) and the present strategy by Bhat?

    As for the Trademarks Act I don’t think such an innovation would be possible since unlike the Patents Act the Trademark Act does not allow the High Court to rectify a trademark. Moreover S. 124 is quite clear that the proceedings have to be stayed until the IPAB hears the revocation.

    Warm Regards,
    Prashant

    Reply

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