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Synopsis

The Delhi High Court in its judgment dated May 15, 2023, held that Section 48 of the Patents Act specifically confers a patentee with the right to prevent third parties from infringing the patent.

The provision is not subject to any condition whatsoever and is not related to the Supreme Court judgment in Alloys Wobben v. Yogesh Mehra, (2014) 15 SCC 360, said the court.

The court was hearing a petition by AstraZeneca AB against an application for rejection of a patent suit by Westcoast Pharmaceutical, on the grounds of pecuniary jurisdiction, territorial jurisdiction and the Alloys Wobben controversy.

Justice C. Hari Shankar while dismissing the application by Westcoast Pharma, observed,

“… there is no declaration in para 19 of Alloys Wobben, of the legal position that, till the culmination of post-grant opposition proceedings, a patentee cannot sue for infringement of his patent. In the first place, the Supreme Court was, in the said case, not concerned with the right of the patentee to institute a suit vis-a-vis the post-grant opposition filed against the patent, but was concerned with the right of the same defendant to simultaneously prosecute a revocation petition and a counterclaim in the suit. Secondly, even the issue of whether an infringement suit could be instituted till the expiry of a year from the date of grant of the patent never arose for consideration before the Supreme Court in that case; nor from the judgment, does it appear that any arguments on that point were raised.”

It was added that if such interpretation is allowed, the statutory protection granted to a patentee in this respect would turn ineffective and any such case of infringement would become immune to challenge till the expiry of one year from the grant of patent (till post-grant oppositions are addressed).

“In Alloys Wobben, the Supreme Court was not concerned with the effect of filing of a revocation petition, much less of a post-grant opposition, on a pending suit. More importantly, there is no unequivocal declaration of law to be found in para 19 of Alloys Wobben , to the effect that an infringement suit cannot be filed if a post-grant opposition against the patent, preferred within a period of one year is pending. All that the Supreme Court has said that it is unlikely, and perhaps impossible, that such a suit would be filed. It is well settled that a judicial precedent is only an authority for what it takes, and not for what may logically seem to flow from it. It may not be possible, therefore, for a Court to read into para 19 of Alloys Wobben, any statement of the law to the effect that a patentee, who has been granted a patent and finds the patent being infringed, must sit back and tolerate the infringement, powerless to institute an injunctive suit”, Court said while interpreting Para 19 of the Alloys Wobben judgment.

The Court further discussed jurisprudential concepts of obiter dicta and ratio decidendi, placing reliance on the observations in Director of Settlements v. MR Apparao, (2002) 4 SCC 638 and Arun Kumar Aggarwal v. State of Madhya Pradesh, (2014) 13 SCC 707 to conclude that the observations under Para 19 of Alloys Wobben was essentially an obiter and not ratio of the Supreme Court judgment.

Brief Background:

In the present case, a patent claiming the compound Osimertinib was granted to the plaintiff on 11th June 2018. Post-grant oppositions were filed by Sunshine Organics Pvt. Ltd. on May 14, 2019 and by Natco Pharma Ltd. on June 10, 2019, under Section 25(2)3 of the Patents Act.

The present suit was filed only thereafter on Feb. 8, 2022, when the aforesaid post-grant oppositions of Sunshine and Natco were still pending before the Controller General of Patents.

It was the contention on behalf of the counsel for the respondent that para 19 of the decision in Alloys Wobben clearly holds that the right of the plaintiff to hold the patent would crystallise only on favourable disposal of the post-grant oppositions filed against the patent. Reliance was placed on the concluding sentence in para 19 of Alloys Wobben , which observes that it is unlikely for an infringement suit to be filed when proceedings under Section 25(2) are pending.

Case Title: Astrazeneca AB v. Westcoast Pharmaceutical, CS(COMM) 101/2022