In a well-reasoned judgment
issued recently, the Delhi High Court (“Court”) adjudicated upon a suit for patent infringement comprising three patents over insecticides and herbicides.
The three patents owned by the plaintiff relate to a herbicidal composition. The distinctive attribute of the composition developed by the plaintiff is this: it is an amalgam of 2 compounds each of which combats different kinds of weeds. More specifically, the composition consists of a compound called Metsulfuron, which controls grassy weeds and a compound called Sulfosulfuron which controls broad leaf weeds. As a result, the composition, according to the plaintiff, is the only one which effectively tackles grassy as well as broad leaf weeds together.
The composition is in the shape of wettable granules. Around 10% of the composition consists of Metsulfuron and around 70% consists of Sulfosulfuron. The gravamen of the Plaintiff’s case was that it found out from market sources and field executives that the defendant participated in a tender for the supply of a composition consisting of these two compounds roughly in the same proportion in which they are present in the plaintiff’s composition. This being the case, it sued for patent infringement.
To repel the plaintiff’s contentions, the defendant advanced three main arguments.
First, the defendant argued that both compounds comprising the plaintiff’s composition have been well known for a considerable amount of time – metsulfuron methyl since 1986 and sulfosulfuron since the 90s. Many compositions consisting of these compounds have existed for a long time, so the plaintiff’s argument that it invented this composition is lacking in merit. In particular, the defendant relied on a paper published by one Dr. C. P. Singh, at the G.P. Pant College of Agriculture, who dealt with the consequences of a potential combination of these two compounds and patent US 301 which, the defendant argued, relates to a composition containing these two compounds.
Second, the defendant argued that there exist several pertinent differences between the plaintiff’s patent and the defendant’s composition. More specifically, it focused on how, in the defendant’s composition, a stabilizer and the absence of the use of tallow soap as defoamer are missing. Further, the quantity of wetting agents, dispersing agents and suspending agent are significantly higher in the defendant’s composition.
Third, in support of the second argument, the defendant referred to a finding of the Registration Committee of the Central Government Insecticides Board (“Committee”) to the effect that the registration obtained by the defendant for its composition was not covered by the plaintiff’s process patent. In light of the fact that all the three patents of the plaintiff revolve around the same process, the defendant argued, the clear finding that the plaintiff’s process and the defendant’s composition were dissimilar returned by the Committee firmly supported its stance.
Reasoning of Court:
The Court arrived at the conclusion that the defendant’s conduct constituted patent infringement. In the Court’s view, this conclusion was dictated by four key reasons.
First, the Court outlined five key similarities between the plaintiff’s patent and the defendant’s composition. These similarities were in the shape of such things as similar percentage of metsulfuron methyl and Sulfosulfuron in the composition; existence of silicon defoarmer in both compositions; and absence of fatty acid ester.
Second, the Court held that the parties were ad idem on the point that the only difference between their compositions was this: the defendant’s composition did not include a stabilizer which was present in the plaintiff’s composition. The mere existence of a stabilizer of 0.1 to 10% in the plaintiff’s composition, held the Court, was not a sufficient basis to distinguish the two compositions.
Third, none of the materials cited by the defendant as prior art, the Court held, envisaged the composition developed by the plaintiff. In explicating this point, the Court specifically relied on US 301 and a paper written by CP Singh.
As regards US 301, the Court held that it did not constitute prior art as that composition was not just confined to sulfosulfuron and metsulfuron but in fact included other compounds and the percentage in which sulfosulfuron and metsulfuron were present was different. As regards Dr. C.P. Singh’s paper, the Court held that Dr. Singh was of the view that a combination of sulfosulfuron and metsulfuron would not be effective and that the two must be used in a sequential fashion for maximum effect. This being the case, Dr. Singh’s conclusion was directly at odds with the plaintiff’s composition, thereby indicating that the paper did not envisage the plaintiff’s composition.
Finally, relying on the Kerala High Court’s judgment in the case of Shogun Organics Ltd., Vs. Union of India, the Court held that a finding of the Committee does not have any bearing on the validity of a patent. In support of its conclusion, the Court drew sustenance from the fact that a pre-grant opposition against the plaintiff’s patent had been dismissed, coupled with the fact that another dispute involving the plaintiff’s patents was settled in its favour.
On the whole, the judgment comes across as being tightly reasoned and founded upon a correct application of well settled legal principles to the factual matrix obtaining in the case at hand. Since the Court returns clear findings to the effect that the plaintiff’s invention was not covered by the prior art, coupled with the fact that the plaintiff’s and defendant’s compositions were almost identical, a ruling in the plaintiff’s favour flows as a natural consequence of these findings.
In his lucid analysis
of this judgment, Eashan Ghosh, a friend of this Blog, outlines what he views as the infirmities in the Court’s analysis. While I am of the view that the infirmities that he adverts to would not have impacted the outcome in any way, I think one criticism of the judgment which he voices merits deeper scrutiny.
Eashan argues that the Court could not have lightly brushed aside a finding from the Committee to the effect that the defendant’s composition was different from the Plaintiff’s patent, in light of the fact that the Committee possesses subject expertise in this domain.
While it is a settled principle that the Committee is not empowered to rule on claims of patent infringement, I think the Court’s analysis would have been bolstered by an engagement with the findings of the Committee. Indeed, the plaintiff’ consciously chose to withhold the findings of the Committee from the Court. It stands to reason that this decision constitutes a tacit recognition of the importance of the Committee’s findings. This being the case, if the Court had clearly explained why the findings of the Committee do not detract from the findings returned by it, its analysis would have rested on a firmer footing.