Gaur Hari Guchhait & Ors. v. Shogun Organics Ltd

1. This appeal has been preferred by the original defendants in a Civil Suit being CS(COMM) No.201/2017. The civil suit was filed by the respondent in these proceedings alleging breach of process patent by the original defendants. The suit was decreed vide judgment and decree dated 14th August, 2019 (Annexure – A to the memo of this first appeal). 2019:DHC:5202-DB

2. Factual Matrix:  For the product d-trans Allethrin, an application was preferred by the original plaintiff in the year 1995 under Section 9 of the Insecticides Act, 1968 (hereinafter referred to as “the 1968, Act”).  On 17th March, 1997, the original plaintiff was granted registration under Section 9(3) of the 1968, Act and the product was registered.  Thereafter the appellant No.4 (original defendant No.4) applied for registration for d-trans Allethrin on 20th February, 2006.  The original defendant No.4 was granted registration under Section 9(4) of the Act, 1968 on 13th February, 2007.  The original plaintiff preferred an application for registration of the patent for the “Process of manufacturing of d-trans Allethrin”. This application was preferred on 10th May, 2007.  After following the procedure under the Patents Act, 1970 (hereinafter referred to as “the 1970, Act”) by obtaining the first examination report and thereafter rejection of the pre-grant opposition filed by defendant No.4 under Section 25(1) of the 1970, Act the Patent was granted to the original plaintiff.  Pre-grant opposition was dismissed vide order dated 30th June, 2009 by the Patent Office.  Patent was granted to the original plaintiff on 13th November, 2009.  Thereafter under Section 25(2) of the 1970, Act “post grant oppositions” were filed by original defendant Nos.[4] and 5.  These post grant oppositions were allowed vide order dated 26th June, 2013 by the Patent Office.  Thus, the process patent granted to the plaintiff was revoked vide order dated 26th June, 2013.  Being aggrieved and dissatisfied by the order dated 26th June, 2013, the original plaintiff preferred an appeal before Intellectual Property Appellate Board (IPAB). This appeal was allowed vide order dated 18th August, 2014. Thus, the process patent was revived/granted again by quashing and setting aside the order dated 26th June, 2013 and the matter was remanded back to the learned Deputy Controller of Patents and Design.  After remand, the Patent Office reheard the “post grant oppositions” filed by original defendant Nos.[4] and 5. After giving opportunity of being heard to the concerned parties, the Patent Office rejected the “post grant oppositions” vide its order dated 16th February, 2016, which had been initiated by defendant Nos.[4] and 5 under Section 25(2) of the 1970, Act. Thus, the process patent was continued to be in favour of the original plaintiff.  Thereafter, an appeal has been preferred by the defendant Nos.[4] and 5 before the IPAB and the same is presently pending.  The original plaintiff started manufacturing “d-trans Allethrin” with their patented process from 2010 onwards.  It is alleged by the original plaintiff that the original defendants have also started manufacturing d-trans Allethrin with the same process, which is patented by the original plaintiff from October, 2014.  Hence, a suit was instituted by the original plaintiff being CS(OS) No.3882/2014 which was converted into CS(COMM) No.201/2017, for getting permanent injunction restraining the defendants from infringement of its patent – IN – 236630 (IN „630) pertaining to the “process for manufacturing d-trans Allethrin” which is used as an active ingredient in mosquito repellents and other mosquito control products. The suit was decreed vide judgment and decree dated 14th August, 2019 and hence the original defendants have preferred the present RFA(OS)(COMM) No.41/2019.

3. Arguments canvassed by appellants (original defendants): (a) It is submitted by the counsel for appellants (original defendants) that as per a conjoint reading of paragraph 15 with paragraph 22 of the plaint of the original plaintiff, the process for manufacturing d-trans Allethrin was already known and these appellants (original defendants) were also using the same process because the product was already registered under Section 9(4) of the 1968, Act. This aspect of the matter has not been properly appreciated by the learned Single Judge while deciding CS(COMM) No.201/2017 and hence the judgment and decree dated 14th August, 2019 passed by the learned Single Judge deserves to be quashed and set aside. Once the process for manufacturing d-trans Allethrin was already a known process, there cannot be a registration of the same under the 1970, Act in favour of the original plaintiff. This defence which was raised under Section 107 of the 1970, Act has not been properly appreciated by the learned Single Judge. (b) It is further submitted by the counsel for appellants (original defendants) that these appellants had disclosed their process of manufacturing d-trans Allethrin and registered the same under Section 9(4) of the 1968, Act. Looking to the averments made in paragraph 15 and 22 of the plaint, the process for manufacturing of d-trans Allethrin was already a known process and was also followed by the defendants and hence no process patent could have been registered in favour of the plaintiff.

(c) It is further submitted by the counsel for appellants (original defendants) that against the grant of the patent after the order passed by IPAB and after rejections of “post grant oppositions” by the Patent Office vide its order dated 16th February, 2016, an appeal has been preferred by the original defendant Nos.[4] and 5 before the IPAB and the same is pending. This aspect of the matter has also not been properly appreciated by the learned Single Judge. Counsel appearing for the appellants (original defendants) further submitted that under the Right to Information Act, 2005, a reply has been given by Ministry of Agriculture which is at page 215 to the memo of this appeal to the effect that the process followed by the plaintiff and that followed by the defendants is similar. This aspect of the matter has also not been properly appreciated by the learned Single Judge while deciding CS(COMM) No.201/2017 vide judgment and decree dated 14th August, 2019 and the same may, therefore, be quashed and set aside.

4. Arguments canvassed by respondent (original plaintiff): (a) Counsel appearing for the respondent (original plaintiff) submitted that there is a vast difference between “the product” and “process for manufacturing of product”. What is registered under the Act, 1968 is a product of the plaintiff under Section 9(3) thereof. The 1968, Act is not a registration of the process of manufacturing of the product whereas the registration of the process patent under the 1970, Act is altogether another aspect of the matter because under the 1970, Act what is registered is “Process patent” of manufacturing of d-trans Allethrin. (b) It is further submitted by the respondent (original plaintiff) that even if the product of these appellants (original defendants) is registered under Section 9(4) of the 1968, Act that does not mean that the original defendants can violate the process patent obtained by the original plaintiff. This aspect of the matter has been properly appreciated by the learned Single Judge while deciding CS (COMM) No.201/2017 vide judgment and decree dated 14th August, 2019 and hence this appeal may not be entertained by this Court.

(c) It is further submitted by the counsel for respondent (original plaintiff) that the process patent registered in favour of the original plaintiff for manufacturing of d-trans Allethrin creates a monopoly for a certain period of years in favour of the Patentee – original plaintiff which is respondent in this appeal. There is an infringement of the process patent by these appellants (original defendants). This aspect of the matter has been proved by the evidence given by PW[1] – Mr. Mangesh V.H. It is also submitted by the counsel for respondent (original plaintiff) that the product manufactured by the appellants, namely „MAXO‟ was analysed by the Head of the Department of Research and Development of the original plaintiff. Chromatography was also adopted for analyzing the product and it has been mentioned by the plaintiff‟s witness in detail as to how the original defendants have violated the process patent of manufacturing of d-trans Allethrin.

(d) It is further submitted by the counsel for respondent (original plaintiff) that despite the following orders passed by the learned Single Judge in CS(COMM) No.201/2017, the manufacturing process used by the original defendants has not yet been disclosed to the Court:- (i) 23.12.2014, and (ii) 21.07.2015 Despite these orders, the original defendants have not disclosed that their manufacturing process of d-trans Allethrin and therefore a presumption may be drawn against them under Section 114 of the Indian Evidence Act, 1872. (e) It is further submitted by the counsel for respondent (original plaintiff) that while the 1968, Act there is a registration of a “product” whereas under the 1970, Act the process of manufacturing of the product is given protection. Thus, the basic allegation in the plaint is that there is an infringement of patent of the plaintiff by the original defendants. While narrating the details of the infringement of the patent by the defendants in paragraphs 15 and 22 of the plaint, the earlier history has been given but there is nothing in paragraphs 15 and 22 of the plaint which suggests that “process of the product was registered under the 1968, Act”. (f) It is further submitted by the counsel for the respondent (original plaintiff) that there is no requirement of disclosing the manufacturing process of the product under the 1968, Act especially looking to Form No.1 to the First Schedule provided under the Insecticides Rules, 1971 enacted under the 1968, Act. (g) It is further submitted by the counsel for respondent (original plaintiff) that any narration supplied under the Right to Information Act is not conclusive evidence of the interpretation of the 1968, Act read with the 1970, Act. Even if a confused reply is given by the concerned authority under the Right to Information Act to the original defendants, the fact remains that what is registered under the 1968, Act is a registration of a “product” whereas what is registered under the 1970, Act is a “process for the manufacturing of d-trans Allethrin”. (h) Thus, the aforesaid two Acts are meant for different purposes; one is for registration of the product to be used as an insecticide and the other is for protection of the process of manufacturing of the product. These facts cannot be diluted by a confused answer given under the Right to Information Act. It is further submitted by the counsel for respondent (original plaintiff) that neither under Section 30 of the 1970, Act nor under Section 26 of the Patents and Designs Act, 1911, disclosing the process of manufacturing to the Government authority would tantamount to a disclosure to the public at large and hence even if it is presumed that under the 1968, Act the process was given to the Government in the year 1997, it cannot be held to mean a disclosure to the public at large. This aspect of the matter has also been properly appreciated by the learned Single Judge while deciding CS (COMM) No.201/2017 vide judgment and decree dated 14th August, 2019 and hence Regular First Appeal may not be entertained by this Court.

5. Reasons

(i) The present appellants were the original defendants in the

CS(COMM) No.201/2017. The respondent (original plaintiff) had alleged the infringement of process patent No. IN -236630 (IN- „630) by the original defendants. The said patent, patented by the original plaintiff, relates to “process for manufacturing d-trans Allethrin” which is used as an active ingredient in mosquito repellents and other mosquito control products.

(ii) The original plaintiff had preferred an application for registration of the process of manufacturing of the product on 10th May 2007 in accordance with the procedure stipulated under the 1970, Act. Prior to the grant of the patent, the pre-grant opposition was preferred by the original defendant No.4 under Section 25(1) of the 1970, Act and upon rejection of the pre-grant opposition the patent was ultimately granted to the original plaintiff.

(iii) After the grant of the patent, “post grant oppositions” were filed by original defendant Nos.[4] and 5 under Section 25(2) of the 1970, Act. These post grant oppositions were accepted and the patent was revoked.

(iv) An appeal was preferred by the original plaintiff against the revocation of the patent before the Intellectual Property Appellate Board (IPAB). The appeal of the original plaintiff was allowed by the IPAB vide their order dated 18th August, 2014 and the matter was remanded to the Patent Office. The Patent Office reheard the post grant oppositions and dismissed them vide order dated 16th February, 2016. Thus, the grant of patent, which is in fact a “process patent”, was continued in favour of the original plaintiff.

(v) Much has been argued out by the appellants (original defendants) that once the product was registered under Section 9(4) of the 1968, Act and the original defendants had set out their process of manufacturing while seeking registration under the 1968, Act, the process of manufacturing was a known process for which there could not have been any subsequent grant of patent in favour of the original plaintiff. This defence has been raised under Section 107 of the 1970, Act by the original defendants. We are not in agreement with this contention raised by these appellants (original defendants) for the reasons that: (a) The registration of a product under the 1968, Act has nothing to do with the recognition of manufacturing process of the product; (b) Even the original plaintiff‟s product is registered under Section 9(3) of the 1968, Act. The original defendant‟s product is also registered under Section 9(4) of the 1968, Act. What is registered is the “product” for use as an insecticide and not the “method of the manufacturing of product”. It appears that the defendants have tried to create a confusion between the registration of the product and the manufacturing process of the product. In fact, the product is one which is registered under the 1968, Act and for registration of manufacturing process of the product is carried out under the 1970, Act.

(c) Thus, what the original plaintiff has gotten registered under the 1970, Act is the process of manufacturing of d-trans Allethrin. This registration under the 1970, Act is a monopoly created in favour of the original plaintiff, for a limited number of years, which is known as “a process for manufacturing of d-trans Allethrin.”