In CS(COMM) 101/2022-DEL HC- Delhi HC dismisses Westcoast Pharmaceutical’s application seeking rejection of Astrazeneca’s suit; refuses to read Aloys Wobben judgment as proscribing institution of infringement suit during pendency of post grant opposition proceedings under Patents Act
Justice C. Hari Shankar [15-05-2023]

Read Order: ASTRAZENECA AB & ANR Vs. WESTCOAST PHARMACEUTICAL WORKS LIMITED 

Tulip Kanth

New Delhi, May 16, 2023: In a case where Westcoast Pharmaceutical disputed the institution of suit by Astrazenca on the ground that the suit was instituted when the post grant oppositions of Sunshine and Natco were still pending before the Controller General of Patents, the Delhi High Court has rejected Westcoast’s application filed under Order VII Rule 11 of CPC.

“Equally, I agree that there is no provision in the Patents Act which requires the patentee to wait for a period of one year from the grant of the patent, or, in the event any post-grant opposition has been filed within the said period of one year, for the favourable culmination of the proceedings following such post-grant opposition, before suing for infringement of the patent”, the Single-Judge Bench of Justice C. Hari Shankar asserted.

It was the applicant’s case that the suit was bad for want of pecuniary jurisdiction, as it was required to be filed before the District Court and the suit was in the nature of a quia timet action, premised on a mere apprehension that the defendant would launch the allegedly infringing product in the market.

The applicant had also contended that the suit was bad for want of territorial jurisdiction, as the defendant was located outside Delhi and Plaintiff was in Sweden.

The Bench was of the opinion that no case for rejecting the present suit under Order VII Rule 11 for want of pecuniary jurisdiction existed.

On the issue of territorial jurisdiction, the Bench opined that a defendant cannot seek dismissal, or rejection, of a suit on the ground of want of territorial jurisdiction. Order VII Rule 10 would apply in such a case, nor Order VII Rule 11, and the Court could only be asked to return the suit for presentation before the proper forum.

The Bench proposed to not return any finding on the prayer in the application  for rejection of the plaint as such a prayer couldnnot be sought on the ground of want of territorial  jurisdiction, as want of territorial jurisdiction stands specifically covered by Order VII Rule 10. 

The second ground on which dismissal was sought was based on the observation of the Supreme Court in Aloys Wobben v. Yogesh Mehra wherein it has been observed that only the culmination of procedure contemplated under Section 25(2) of the Patents Act bestows the final approval to the patent. Therefore, it is unlikely and quite impossible, that an “infringement suit” would be filed while the proceedings under Section 25(2) are pending, or within a year of the date of publication of the grant of a patent.

It was submitted that the suit patent IN 297581 claiming the compound Osimertinib, was granted to the plaintiff on June 11,2018, whereafter, post grant oppositions were filed by Sunshine Organics Pvt. Ltd. (Sunshine) on May  14, 2019 and by Natco Pharma Ltd. (Natco) on June 10, 2019, respectively, under Section 25(2)3 of the Patents Act. The present suit was filed only thereafter on February 8, 2022, when the post grant oppositions of Sunshine and Natco were still pending before the Controller General of Patents.

As per the applicant, the plaintiff neither had the right to assert that the suit patent crystallised as yet, nor could the plaintiff institute an infringement suit at this stage, even while the post grant oppositions filed by Sunshine and Natco were pending.

The Bench was  unable to read into para 19 of Aloys Wobben Case(Supra) any statement of the law which would derogate from the statutory right, conferred on the patentee or introduce, as a condition for exercise of the statutory right, the requirement of waiting for one year after the patent is granted or, if a post grant opposition has been filed within that period, for a favourable decision in the post grant opposition, before suing for infringement.

“To reiterate, there is no declaration in para 19 of Aloys Wobben , of the legal position that, till the culmination of post grant opposition proceedings, a patentee cannot sue for infringement of his patent.”, the Bench said.

As per the Bench, the view expressed by the Top Court in Sergi Transformer Explosion Prevention Technologies Pvt. Ltd. v. CTR Manufacturing Industries Ltd. supported the view of the High Court in the case at hand.

In Sergi’s Case (Supra), the Division Bench solely on the basis of the pendency of the post grant opposition and revocation petition, stayed the ad interim order but the Top Court disapproved of such approach in merely proceeding on the basis of the post grant opposition filed by Sergi, without examining the issue on merit.

“In the light of the view adopted by the Supreme Court in Sergi5 it would be hazardous for this Court to read para 19 of Aloys Wobben2 as proscribing the institution of an infringement suit during the pendency of post grant opposition proceedings instituted under section 25(2) of the Patents Act”, the Bench said.

Dismissing the petition,the Bench held, “No case for rejecting the suit under Order VII Rule 11, on any of the grounds urged in this application can, therefore, be said to exist.”