India’s Top 10 IP Judgments/Orders of 2020 [Topicality/Impact]

1. Allani Ferid v. Assistant Controller of Patents & Designs (IPAB)

In a very important development, the IPAB granted a software patent on a ‘method and device for accessing information sources and services on the webto Tunisian citizen Ferid Allani, 19 years after the original application! After multiple rounds at the Patent Office, Justice Pratibha Singh of the Delhi High Court had issued an order in 2019 directing the Patent Office to re-examine the application in the context of developments that have occurred since the filing of the patent in 1999. This refers to the addition of the phrase “per se” in section 3(k) of the Patents Act, which earlier barred computer programmes from being patented. This court had observed that this was done to ensure that genuine inventions that are developed based on computer programmes (as opposed to being only computer programmes) are not rejected. Thus, if the invention demonstrates a ‘technical effect’ or a ‘technical contribution’ it would be patentable even though it may be based on a computer program. The grant of this patent has opened the field for patent applications related to artificial intelligence, blockchain technologies and other digital products which may computer programme-based.

2. Astrazeneca v. Intas Pharma Ltd. & Alkem Labs Ltd.Astrazeneca AB & Anr. v. Emcure Pharma Ltd. & MSN Labs Ltd. (Delhi High Court)

Early in the year, the Delhi High Court ruled against generic manufacturers of cardiovascular diseases drug Ticagrelor by holding that even though the drug was covered by a previous genus patent, since it is produced and marketed under a species patent, the patentee is entitled to enforce the later species patent. This decision was controversially in contradiction with the previous rulings of the court as well as decisions rendered later in the year which have held that coverage and disclosure cannot be separate.

In November 2020, the Delhi High Court refused to grant an interim injunction for the manufacture of generic medicines whose subject matter was argued to be disclosed by a species patent, whereas they had already been covered in an expired genus patent. In this well-reasoned judgment, the court reiterated that there cannot be any dichotomy between disclosure and coverage. It also noted that owing to the COVID-19 pandemic, patients already suffering from diabetes are at a greater risk of contracting coronavirus and thus, affordable diabetes medication was in public interest. The court also clarified that disclosure requirements had to be strictly followed by patent applicants.

4. Interdigital Tech Corp & Ors. v. Xiaomi Corp & Ors. (Delhi High Court)

In a significant development, the Delhi High Court rejected InterDigital’s proposal for constituting a two-tier confidentiality club for sharing confidential documents to assess whether the licensing terms being offered by InterDigital were on FRAND basis. This proposal sought to exclude any representatives of parties, “other than “non-in-house” advocates and the experts appointed by them”, from accessing documents like “confidential, comparable patent license agreements on FRAND terms, as executed by the parties in the suit”. The court held such a proposal to be against fair play to the defendants and against the lawyer-client relationship.

5. Prof. Dr. Cluadio De Simone & Anr. v. Actial Farmaceutica SRL. & Ors. (Delhi High Court)

In another significant development, the Delhi High Court provided clarity on the interplay between two different IP protections by observing that the same innovation cannot enjoy both trade secret and patent protection. The court rejected the Plaintiffs’ contention that the aspects of the innovation that they sought to protect as trade secrets were separate from the aspects that formed subject matter of their patent. It held that once a patent has been applied for and expired, the ‘innovation’ is in the public domain and no trade secret protection can be claimed thereon.

6. Monsanto Holdings Pvt. Ltd. & Ors. v. Competition Commission of India (Delhi High Court)

The Delhi High Court ruled on the issue of overlap of jurisdiction under the Patents Act and the Competition Act in case of patent licensing terms that may be anti-competitive. It rejected the argument that the specialized regulator, i.e., the Patent Controller would be the one to first determine whether the agreements were an abuse of rights under the Patents Act before the CCI could look into it. The Controller did not have the power to act upon the exercise of patent rights or the agreements that are entered into by patentees with third parties in relation with these rights. Moreover, patents are not an industry in themselves and the grant of a patent merely recognizes an IP right. Thus, Section 3(5) of the Competition Act does not enable an IP right holder to include onerous conditions.

7. Arudra Engineers Pvt. Ltd. v. Pathanjali Ayurved Ltd. & Anr. (Madras High Court)

In an important judgment, the Madras High Court held that Patanjali’s use of the word ‘Coronil’ in its immunity booster tablets caused confusion regarding the possibility of curing coronavirus and played on the prevailing panic and fear among people to make money. Significantly, it ruled that this use infringed upon the Plaintiff’s registered trademark rights on ‘CORONIL’ under Section 29(4) of Trade Marks Act and interpreted the term ‘reputation in India’ under this section, literally. It stated that the Plaintiff simply needed to show that the trademark enjoys a reputation within the country and not meet the standard of fame held by a well-known mark. This interpretation of Section 29(4) allows for marks of significant repute in the domestic market to seek injunctions across classes without being subject to the onerous requirements of being declared a well-known mark under Section 2(zg). They are required to be known only amongst the relevant class of consumers as opposed to the general public.

8. Interdigital Tech Corp & Ors. v. Xiaomi Corp & Ors. (Delhi High Court)

The Delhi High Court (DHC) granted an anti anti-suit injunction in the patent infringement dispute between InterDigital and Xiaomi. The court viewed the lis as not impacting the proceedings before the Wuhan Court concerning fixation of FRAND rates. The court noted Xiaomi’s argument to be predicated on comity of courts and held public policy concerns to trump the comity principle, considering the Wuhan judgment to be a direct impediment to its ability to decide the matter before it. The order was criticised for failing to consider the greater number of InterDigital’s patents in China than India, investigations against InterDigital’s policies in China in 2013, and strategic litigation against defendants in SEP disputes. Rajiv argued that the DHC ignored the public interest aspect that lies at core of a patent infringement suit.

9. Shamoil Ahmad Khan v. Falguni Shah & Ors. (Bombay High Court)

The Bombay High Court held that copyright protection subsists in the theme, plot and story line constituting the essence of a literary work. The plaintiff wrote a story titled ‘Singardaan’ in Urdu and alleged that the defendants’ web series under the identical title, ‘Singardaan’ launched on the App ‘Ullu’ and available on YouTube copied his story’s plot, narrative, characters and title. The Court held that the web series contained all the essential parts of the story. It came to this conclusion noting that it would have been obvious to anyone who had read the story that the web series was only an adaptation of it. The interim order was criticised for its reasoning that the differences drawn up by the defendant between their web series and the plaintiff’s story were not crucial because they constituted ‘mere embellishments’ whereas the story line of the plaintiff was the ‘life and blood’ of the web series. This is because the ‘life and blood’ of the web series is irrelevant to a finding of substantial similarity and copyright infringement. Even if the web series had used the story as an ancillary trivial part of a larger plot whose ‘life and blood’ was something else, if the Court has concluded that the story used was a substantial part of the plaintiff’s copyrightable expression (as it had in this case), it would still result in a finding of infringement. The good thing about this order, though, was the Court’s candid acknowledgement of the difficulty in the ‘delicate task’ of applying the idea-expression dichotomy in practice, ultimately based on a value judgment of the right degree of abstraction.

10. Amazon Seller Services Pvt. Ltd. & Ors. v. Amway India Enterprises Pvt. Ltd. & Ors. (Delhi High Court)

The decision of the Division Bench of the Delhi High Court set aside the Single Judge’s order which had restrained various e-commerce platforms (including Amazon, Flipkart and Snapdeal) from enabling sale of products of ‘direct selling’ companies without their consent. The case concerned the applicability of the 2016 Direct Selling Guidelines (DSGs), Section 79 of the Information Technology Act, and contentions regarding inducement of breach of contract and tortious interference. The Court held that the DSGs are not law, and are only advisory in nature. Further, it noted that the mere fact that the online platforms may have knowledge of the Code of Ethics of the DSEs and the contractual stipulations imposed by such Direct Selling Entitiess, is insufficient to lay a claim of tortious interference.

11. Madras Bar Association v. Union of India & Anr. (Supreme Court)

Adding to an existing trail of decisions on administration of tribunals, the Supreme Court passed a detailed judgement in November, 2020, wherein it upheld the constitutional validity of the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2020 (or Tribunal Rules 2020). Among other things, the decision is crucial for its observation on appointment of the Chairpersons, Vice-Chairperson and Technical Members to different judicial tribunals.

Please click here to view our list of India’s top 10 judgments/orders (jurisprudence/legal lucidity), here for the list of India‘s top 10 IP legislative and policy developments of 2020 and here for the list of India’s top 10 other IP developments.