Eris Lifesciences Limited v. Controller of Patents & Anr.

(2) AND + C.O. (COMM.IPD-PAT) 38/2022 MACLEODS PHARMACEUTICALS LTD...... Petitioner Through: Mr. J. Sai Deepak and Mr. Ankur Vyas, Advocates. (M:8130459281)

VERSUS

THE CONTROLLER OF PATENTS & ANR...... Respondents Through: Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat and Mr. Alexander Mathai Paikaday, Advocates for R-1. Mr. Sanjay Kumar, Ms. Arpita Sawhney, Mr. Arun Kumar Jana, Ms. 2022:DHC:3759 Meenal Khurana, Mr. Harshit Dixit and Mr. Priyansh Sharma, Advocates for R-2. CORAM: JUSTICE PRATHIBA M. SINGH Prathiba M. Singh, J. (Oral) I.A.5610/2022 (u/O VII Rule 11 CPC) in C.O. (COMM.IPD-PAT) 3/2022 I.A.5611/2022 (u/O VII Rule 11 CPC) in C.O. (COMM.IPD-PAT) 38/2022

1. These are two applications filed by Respondent No.2/Patentee (hereinafter ‘Patentee’) seeking dismissal of the revocation petitions under Order VII Rule 11 CPC as being time-barred. The present petitions relate to patent IN 243301, titled ‘8-(3-AMINOPIPERIDIN-1-YL)- XANTHINE COMPOUNDS’ which also covers various pharmaceutical preparations including the compound known by the INN name ‘Linagliptin’. The revocation petitions have been opposed by the Patentee. In the applications filed by the Patentee, the ground taken is that since the patent was granted on 5th October, 2010, the filing of revocations petitions more than 12 years thereafter would be barred by limitation. It is also urged that the said patent was published on two occasions. Once under Section 11A of the Patents Act, 1970 (hereinafter ‘Act’) on 23rd January, 2009 and the second time under Section 43(2) of the Act on 8th October, 2010. According to the Patentee, these publications provided constructive notice to the Petitioners to file objections to the grant of the patent.

2. Ms. Khurana, ld. Counsel for the Patentee submits that suits have been filed by the Patentee against the Petitioners before the High Court of Shimla, Himachal Pradesh, wherein ad-interim injunctions have been granted against the Petitioners herein from infringing patent IN 243301.

3. On the other hand, Ms. Rajeshwari and Mr. Sai Deepak, ld. Counsels, submit that the present revocation petitions were filed before this Court prior to filing of the suits in the High Court of Shimla. Further, the patent has been granted by the Patent Office in Delhi. Thus, the Court of appropriate jurisdiction would be the Delhi High Court.

4. It is further submitted that insofar as the aspect of delay in filing revocation petitions is concerned, the issue is no longer res integra and the same has been adjudicated by this Court in C.O. (COMM.IPD-PAT) 3/2021 titled Dr. Reddys Laboratories Ltd. v. Controller of Patents vide order dated 12th April, 2022.

5. Heard. A perusal of the applications shows that the ground taken, is that the revocation petitions ought to have been filed within three years from the grant of the patent in view of Article 137 of the Limitation Act, 1963. In the opinion of the Court, the issue of limitation in filing revocation petitions is squarely covered by the judgment of this Court in Dr. Reddys Laboratories Ltd. (supra) case wherein the Court has held as under:

14. The reason for prescribing a time period in Section 25(2) but not using any such language in Section 64 is not far to seek in as much as the public policy in India dictates that at any point in time, if any person or even the Central Government wishes to seek revocation, it ought to have a remedy to avail of, in accordance with law. To read Article 137 of the Limitation Act, into Section 64 of the Patents Act, would be in effect rewriting the said provision, which would not be permissible by judicial interpretation. Moreover, the fact that a ‘person interested’ can file a counter claim under Section 64 seeking revocation shows that the trigger for the filing of the counter claim may not arise until and unless the suit itself is filed. This itself shows that the limitation of three years cannot be read into the period for filing the revocation petition. XXX

18. In Section 64 of the Patents Act, since there is no limitation which is prescribed either in the Patents Act or under the Patents Rules, this Court holds that a limitation period cannot be read it into the provision. In the light of the above cited judicial pronouncements and the dynamic/broad definition of ‘persons interested’, filing of a revocation petition could be done at any point in time when such a person’s interest either arises or continues during the life/term of the Patent. This application is thus devoid of merit and is liable to be dismissed.”

6. In view of the fact that the issue is squarely covered by the judgment of this Court in Dr. Reddys Laboratories Ltd. (supra), the applications are devoid of any merits and are dismissed accordingly.

7. However, apart from the question of limitation, other averments made in these applications are not gone into in the present case.

8. Both I.As.5610/2022 & 5611/2022 are disposed of in the above terms. I.A.3507/2022 (for stay) in C.O. (COMM.IPD-PAT) 3/2022 I.A.2974/2022 (for stay) in C.O. (COMM.IPD-PAT) 38/2022