Astrazeneca AB & Anr. filed a suit against Westcoast Pharmaceutical Works Ltd. alleging patent infringement. The plaintiffs contended that the defendant was manufacturing and selling a pharmaceutical product that infringed upon their patented invention. The defendant, in response, filed an application under Order VII Rule 11 of the Code of Civil Procedure (CPC), 1908, seeking the rejection of the suit based on grounds of want of pecuniary jurisdiction, want of territorial jurisdiction, and applicability of the Supreme Court's judgment in Aloys Wobben v. Yogesh Mehra.

Detailed Factual Background: The plaintiffs, Astrazeneca AB and its Indian subsidiary, claimed to hold a valid patent for the compound Osimertinib under patent number IN 297581. The patent was granted on June 11, 2018. The plaintiffs contended that the defendant was attempting to manufacture and distribute a product that infringed on their patent rights.

Post-grant oppositions were filed against the patent by Sunshine Organics Pvt. Ltd. on May 14, 2019, and by Natco Pharma Ltd. on June 10, 2019. The plaintiffs argued that despite these oppositions being pending before the Controller General of Patents, they retained the right to file an infringement suit. The defendant, in contrast, argued that the plaintiffs' rights were not crystallized until the resolution of post-grant opposition proceedings.

• Case Title: Astrazeneca AB & Anr. Vs. Westcoast Pharmaceutical Works Ltd.
• Date of Order: 15 May 2023
• Case No.: CS(COMM) 101/2022
• Neutral Citation: 2023:DHC:3337
• Name of Court: Delhi High Court
• Name of Judge: Hon'ble Mr. Justice C. Hari Shankar

Case Summary

• Astrazeneca AB & Anr. filed a suit against Westcoast Pharmaceutical Works Ltd. alleging patent infringement.
• The plaintiffs contended that the defendant was manufacturing and selling a pharmaceutical product that infringed upon their patented invention.
• The defendant, in response, filed an application under Order VII Rule 11 of the CPC, 1908, seeking rejection of the suit based on:
  • Lack of pecuniary jurisdiction
  • Lack of territorial jurisdiction
  • Applicability of the Supreme Court's judgment in Aloys Wobben v. Yogesh Mehra

Detailed Factual Background

• The plaintiffs claimed to hold a valid patent for the compound Osimertinib under patent number IN 297581.
• The patent was granted on June 11, 2018.
• They alleged that the defendant was attempting to manufacture and distribute a product infringing their patent rights.
• Post-grant oppositions were filed against the patent:
  • By Sunshine Organics Pvt. Ltd. on May 14, 2019
  • By Natco Pharma Ltd. on June 10, 2019
• The plaintiffs argued that they retained the right to file an infringement suit despite these pending oppositions.

Procedural Background

• The plaintiffs filed a commercial IPR suit before the Delhi High Court seeking an injunction against the defendant.
• The defendant filed an application under Order VII Rule 11 CPC for rejection of the plaint, citing:
  • Lack of pecuniary jurisdiction
  • Lack of territorial jurisdiction
  • Applicability of the Aloys Wobben judgment

Issues Involved

• Whether the suit was maintainable despite pending post-grant opposition proceedings?
• Whether the decision in Aloys Wobben precluded the plaintiffs from filing an infringement suit during post-grant opposition?

Arguments

Plaintiffs' Arguments

• Section 11A(3) of the Patents Act allows an infringement suit to be filed once a patent is granted.
• They relied on precedents such as:
  • Novartis AG v. Natco Ltd.
  • CDE Asia Ltd. v. Terex India Pvt. Ltd.
• They argued that Aloys Wobben was inapplicable as it did not deal with the maintainability of an infringement suit pending post-grant opposition.

Defendant's Arguments

• Relied on para 19 of Aloys Wobben, arguing that the plaintiffs’ patent rights had not crystallized.
• Cited Toni & Guy Products Ltd. v. Shyam Sunder Nagpal to argue lack of pecuniary jurisdiction.
• Argued that territorial jurisdiction was lacking under Section 20 CPC.

Judgments Cited

• Aloys Wobben v. Yogesh Mehra (2014) 15 SCC 360: Addressed revocation petitions and counterclaims in infringement suits.
• Novartis AG v. Natco Ltd.: Held that a patentee can sue for infringement even during post-grant opposition.
• CDE Asia Ltd. v. Terex India Pvt. Ltd.: Reaffirmed that post-grant opposition does not bar an infringement suit.
• Toni & Guy Products Ltd. v. Shyam Sunder Nagpal: Discussed pecuniary jurisdiction in quia timet actions.
• Sergi Transformer Explosion Prevention Technologies Pvt. Ltd. v. CTR Manufacturing Industries Ltd.: Supreme Court ruled that post-grant opposition does not bar an infringement suit.

Reasoning and Analysis

• The Delhi High Court rejected the defendant’s application under Order VII Rule 11 CPC.
• Key findings:
  • No statutory bar on filing an infringement suit during post-grant opposition.
  • Aloys Wobben was distinguished as the Supreme Court’s observations were obiter dicta.
  • Pecuniary jurisdiction was upheld as the plaintiffs claimed damages exceeding the court’s threshold.
  • Territorial jurisdiction was established as the infringing products were likely to be sold in Delhi.

Final Decision

• The Delhi High Court dismissed the defendant’s application.
• The suit was allowed to proceed.

Law Settled in This Case

• Pendency of a post-grant opposition does not bar a patentee from filing an infringement suit.
• The right to sue for infringement crystallizes upon the grant of a patent under Section 11A(3) of the Patents Act.
• Observations in para 19 of Aloys Wobben are obiter dicta and not binding precedents.
• Pecuniary jurisdiction is established if claimed damages exceed the court’s threshold.
• Territorial jurisdiction is satisfied where infringing products are sold or likely to be sold.

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539