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2023 SCC OnLine Del 6767
In the High Court of Delhi at New Delhi
(BEFORE YASHWANT VARMA AND DHARMESH SHARMA, JJ.)
FAO(OS) (COMM) 159/2023 & CM APPL. 39175/2023 (Interim
Stay), CM APPL. 39176/2023 (Ex. Filing Suit Record & Summoning
of Suit Record), CM APPL. 39177/2023(Addl. Document)
Vifor (International) Limited and Another …
Appellants;
Versus
MSN Laboratories Pvt. Ltd. and Another …
Respondents.
With
FAO(OS) (COMM) 160/2023 & CM APPL. 39195/2023 (Interim
Stay), CM APPL. 39196/2023 (Ex. Filing Suit Record & Summoning
of Suit Record), CM APPL. 39197/2023(Addl. Document)
Vifor International Ltd. and Another … Appellants;
Versus
Corona Remedies Pvt. Ltd. and Another …
Respondents.
And
FAO(OS) (COMM) 161/2023 & CM APPL. 39199/2023 (Interim
Stay), CM APPL. 39200/2023(Ex. Filing Suit Record & Summoning
of Suit Record), CM APPL. 39201/2023(Addl. Document)
Vifor International Ltd. and Another … Appellants;
Versus
Dr. Reddys Laboratories Ltd. … Respondent.
FAO(OS) (COMM) 159/2023, CM APPL. 39175/2023, CM APPL.
39176/2023, CM APPL. 39177/2023, FAO(OS) (COMM) 160/2023,
CM APPL. 39195/2023, CM APPL. 39196/2023, CM APPL.
39197/2023, FAO(OS) (COMM) 161/2023, CM APPL. 39199/2023,
CM APPL. 39200/2023 and CM APPL. 39201/2023
Decided on August 10, 2023
Advocates who appeared in this case:
Mr. Kapil Sibal, Sr. Adv., Mr. Rajiv Nayar, Sr. Adv. and Mr. Sandeep
Sethi, Sr. Adv. along with Mr. Pravin Anand, Ms. Vaishali Mittal, Mr.
Rohin Koolwal, Ms. Manisha Singh and Mr. Hersh, Advs.
Mr. Chander M. Lall, Sr. Adv along with Mr. J Sai Deepak, Mr. G.
Nataraj, Mr. Shashikant Yadav, Mr. Rahul Bhujbal and Ms. Ananya
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Chugh, Advs.
Mr. Kapil Sibal, Sr. Adv., Mr. Rajiv Nayar, Sr. Adv. and Mr. Sandeep
Sethi, Sr. Adv. along with Mr. Pravin Anand, Ms. Vaishali Mittal, Mr.
Rohin Koolwal, Ms. Manisha Singh and Mr. Hersh, Advs.
Ms. Rajeshwari H. along with Mr. Tahir AJ and Ms. Garima Joshi,
Advs.
Mr. Kapil Sibal, Sr. Adv., Mr. Rajiv Nayar, Sr. Adv. and Mr. Sandeep
Sethi, Sr. Adv. along with Mr. Pravin Anand, Ms. Vaishali Mittal, Mr.
Rohin Koolwal, Ms. Manisha Singh and Mr. Hersh, Advs.
Mr. Chander M. Lall, Sr. Adv along with Mr. J Sai Deepak, Mr. G.
Nataraj, Mr. Shashikant Yadav, Mr. Rahul Bhujbal and Ms. Ananya
Chugh, Advs.
ORDER
FAO(OS) (COMM) 159/2023 & CM APPL. 39176/2023(Ex. Filing
Suit Record & Summoning of Suit Record), CM APPL.
39177/2023(Addl. Document);
FAO(OS) (COMM) 160/2023 & CM APPL. 39196/2023(Ex. Filing
Suit Record & Summoning of Suit Record), CM APPL.
39197/2023(Addl. Document);
FAO(OS) (COMM) 161/2023 & CM APPL. 39200/2023(Ex. Filing
Suit Record & Summoning of Suit Record), CM APPL.
39201/2023(Addl. Document)
1. Notice. Let the noticed respondents file their replies, if so chosen
and advised, within a period of two weeks,. The appellants shall have a
week thereafter to file their rejoinder affidavits.
2. Let the appeals be put down on 04.09.2023 in the category of
“End of Board”.
CM APPL. 39175/2023 (Interim Stay) in FAO(OS) (COMM)
159/2023;
CM APPL. 39195/2023 (Interim Stay) in FAO(OS) (COMM)
160/2023;
CM APPL. 39199/2023 (Interim Stay) in FAO(OS) (COMM)
161/2023
3. Having heard Mr. Sibal, learned senior counsel appearing for the
appellants, Mr. Lall, learned senior counsel and Mr. Deepak, learned
counsel appearing for respondents in FAO(OS) (COMM) 159/2023 and
FAO(OS) (COMM) 161/2023, we prima facie find that the following
issues arise for our consideration in the present appeals. The product in
1
question has been conferred an International Non-proprietary Name
Ferricum Carboxymaltose2. The said assignment of an INN to the
3
product has also been accepted by the World Health Organisation . The
plaintiff/appellant has held the patent in various countries since 2007.
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As would be evident from the applications that were filed before the
Patent Office in India, Claim No. 1 was for a product while Claim Nos. 2
to 6 were for a process. The respondents at today's hearing were unable
to dislodge the claim of novelty insofar as FCM as a product is
concerned. It was also not their case that FCM was known in or
discoverable from prior art. We thus, prima facie, find ourselves unable
to concur with the learned Single Judge who has understood it to be a
product by process patent alone.
4. We also take note of Clause 7.9 of the “Guidelines for
Examination of Patent Applications in the Field of
Pharmaceuticals” framed by the Office of the Comptroller General of
Patents, Design and Trademarks, October, 2014 which reads thus:—
“7.9 Product-by-process claims:
A claim to a product obtained or produced by a process is
anticipated by any prior disclosure of that particular product per se,
regardless of its method of production. In a product-by-process
claim, by using only process terms, the applicant seeks rights to a
product, not a process. The IPAB held in ORDER No. 200/2012
“…….product-by-process claims must also define a novel and
unobvious product, and that its patentability cannot depend on the
novelty and unobviousness of the process limitations alone.
Therefore, the patentability of a product by process claim is based on
the product itself if it does not depend on the method of production.
In other words, if the product-by-process claim is the same as or
obvious from a prior product, the claim is un-patentable even if the
prior art product was made by a different process. Accordingly the
product by process claim must define a novel and unobvious product
and the patentability in such claim cannot depend on the novelty
and un-obviousness of the process limitation alone”.
Therefore, in product-by-process claims, the applicant has to
show that the product defined in process terms, is not anticipated or
rendered obvious by any prior art product. In other words the
product must qualify for novelty and inventive step irrespective of
the novelty or inventive step of the process.”
5. We, in light of the above, find ourselves at this stage unable to
sustain the conclusions that have ultimately come to be recorded by
the learned Single Judge in paragraphs 66-67 in terms of which a
conclusion has come to be recorded that Indian Patent No. 221536 was
a product by process claim alone.
6. The grievance of the appellants further is that the impugned
judgment has come to be rendered after more than seven months as a
consequence of which various technical documents which had been
relied upon have neither been taken into consideration nor noticed.
These are detailed in Para-II of the Note which has been placed for our
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consideration. We are further of the opinion that the conclusions
recorded in Para 71 to 73 would also not sustain when one bears in
mind the allegations made in the plaint as well as the filings before the
Patent Office.
7. We note that during the pendency of the proceedings before the
learned Single Judge, a statement was made on behalf of the
respondents in FAO (OS) (COMM) 159/2023 and FAO (OS) (COMM)
161/2023 that they would not commence the launch of their competing
products till the matter is decided. The patent itself is to expire on 20
October 2023.
8. We thus take on board the prayer made by learned counsels for
respective parties for these appeals being placed for expeditious
disposal.
9. Accordingly and for the reasons assigned hereinabove, we stay
the operation and effect of the impugned directions contained in
paragraph 113 of the impugned order dated 24 July 2023.
10. The applications shall stand disposed of.
———
1
INN
2
FCM
3
WHO
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