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.
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?