Allowed

Venkata Narayana Active Ingredients Pvt. Ltd. v. Novartis Ag and another

Madras HC19 Apr 2021A/3132/2020

Case brief

AI extract

What is this about?

This court allowed an application by the defendant to file 12 additional documents alleging non-patentability and violation of disclosure provisions under Section 8 of the Patents Act. The application seeks to challenge the validity of the patent underlying a prior consent decree, which the court held serves as a valid defense issue during trial.

What did the court decide?

Granted permission to file 12 additional documents regarding US patent history, examination reports, and scientific publications relevant to Section 8 disclosure violations and non-patentability.

Venkata Narayana Active Ingredients Pvt… — Contract and Commercial Disputes | Madras HC (2021)

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A.No.3132 of 2020 in C.S.No.282 of 2018

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IN THE HIGH COURT OF JUDICATURE AT MADRAS

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Reserved on :15.04.2021 Pronounced on :19.04.2021

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Coram:

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THE HONOURABLE DR. JUSTICE G. JAYACHANDRAN

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A.No.3132 of 2020 in C.S.No.282 of 2018 Venkata Narayana Active Ingredients Private Limited (Formerly Nutra Specialties Pvt.Ltd.) Venkata Narayana Towers, III Floor, New No.60, Old No.35, Venkatanarayana Road, T.Nagar, Chennai 600 017. .. Applicant/Defendant /versus/ 1.Novartis AG, Lichtstrasse 35, 4056, Basel, Switzerland, Rep.by its POA Mr.Atul Bade

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2.Novartis Healthcare Pvt. Ltd., Sandoz House, Shiv Sagar Estate, Dr.Annie Besant Road, Worli, Mumbai 400 018, Rep.by its POA Mr.Atul Bade. .. Respondents/Plaintiffs Prayer: Application has been filed under Order XI, Rule 10 of OS Rules read with Order 11 Rule 1(10) and (12) of CPC as amended by the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015, praying to allow this application and permit the applicant/defendant to file the documents pertain to the

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respondents/plaintiffs' patent and literature regarding non-patentability of the respondents/plaintiffs' alleged invention.

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*Doc* *.No.*	*Date*	*Status*	*Particulars*
1.	09.12.1999	Photocopy	US Patent No.6,166,063 granted to application No.09/458,224 to the plaintiff
2.	09.12.1999	Photocopy	European patent appln. PCT/EP1999/009708 published in EP1 137 635 B1
3.	15.06.2000	Photocopy	PCT International Appln.No. PCT/ EP99[09708 filed on 09.12.1999 published
4.	28.11.2005	Photocopy	First Examination Report (FER) for impugnedpatent.
5.	15.11.2006	Photocopy	Replyto FER
6.		Photocopy	Corresponding EP granted claims EP1137635 followed by statement EP113765
7.	14.05.1998	Photocopy	Teaching of WO98/19998 entitled 'N substituted-2-cyanopyrrolidines'
8.		Photocopy	WO98/1998 realtes to PCT/FP97/006135 witpriority
9.		Web publication	Art (Ref Chem Rev.2013 May 8; 113 (5):3516-360
10.		Web publication	DOREEN M.ASHWORTH ET AL:2- Cyanopyrrolidides as potent, stable inhibitors of Dipetidylial peptidase IV” BIO-ORGANIC AT MEDICINAL CHEMISTRY LETTERS, Vol.6, No.10, 1996, pages 1163-1166.

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A.No.3132 of 2020 in C.S.No.282 of 2018

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*Doc* *.No.*	*Date* *Status*	*Particulars*
11.	Web publication	KJL AUGUSTYNS ET AL: “Pyrrolidides:synthesis and inhibitors of dipeptidyl peptidase IV” EUROPEAN JOURNAL OF MEDICINAL CHEMISTRY, Vol.32, 1997, pages 301-309.
12.	27.03.2003 Photocopy	Affidavit of Dr.Kulkarni
13.	27.03.2003 Photocopy	Communication issued to the plaintiff by the European Patent Office
14.	25.06.2003 Photocopy	Response submitted by the plaintiff to the EPO
15.	04.06.2001 Photocopy	Form 3 filed by the Patentee in Application No.09/209.068.
16.	04.06.2000 Photocopy	US Patent No.6,011,155 granted to Application No.09/458,224 to the plaintiff
17.	26.09.2000 Photocopy	US Patent No.6,124,305 granted to Application No.09/458,224 to the plaintiff.
	For Applicant For Respondents O R (The case has been he	:Mr.T.K.Ramkumar :Mr.Arun C.Mohan ------ D E R ard through Video Conferencing)

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This application has been filed to permit the applicant/defendant to

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A.No.3132 of 2020 in C.S.No.282 of 2018

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file the documents pertain to the respondents/plaintiffs' patent and literature regarding non-patentability of the respondents/plaintiffs' alleged invention.

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2.Facts necessary for deciding the application to receive additional documents are:-

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The main relief sought in the suit is permanent injunction to restrain the defendant from dealing in Active Pharmaceutical Ingredient (API), Pharmaceutical products, or formulation containing Vildagliptin alone or vildagliptin in combination with any other compound or API or in any other form as may amount to infringement of Indian Patent No.212815 of the first plaintiff.

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3.The defendant had filed written statement denying any infringement of plaintiffs’ patent in API Vildagliptin. The plaintiffs’

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patent monopoly over the ingredient ceased after expiry of 10 years period ie on 09/12/2018. The export done by the defendant was for research purpose and not for commercial purpose. Hence the act of the

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A.No.3132 of 2020 in C.S.No.282 of 2018

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defendant not to be considered as infringement. There has been misrepresentation before the Patent Office for grant of the same, disclosures under Section 8 of the Patents Act, 1970 has not been followed.

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4.In support of the averments made in the written statement, the defendant has relied 50 documents. Later, after expiry of limitation period to file written statement, an attempt to file additional written statement with counter claim was made by the defendant. The said application No.8944/2018 was dismissed on 12/07/2019 by this Court under Commercial Division. The appeal in O.S.A.No.227/2020 before the Commercial Appellate Division was dismissed on 01/02/2021 with certain observations. Now the present application is filed by the defendant to receive 17 additional documents stating that, at the time of filing the written statement, the applicant/ defendant had no access to the documents relating to the non-patentablility of the patent’s alleged invention and was able to obtain the same only subsequent to the filing of the written statement. The validity of the patent goes to the root of the

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A.No.3132 of 2020 in C.S.No.282 of 2018

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above suit and the defendant will be put to irreparable loss, if not permitted to file the documents.

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5.The plaintiffs in their counter to the application to receive additional documents, contended that the application is not maintainable. The petition is filed to delay the disposal of the suit. The defendant is not only guilty of committing infringement of patent, so guilty of committing breach of undertaking dated 28/07/2015 in the earlier suit C.S.No.329/2015 between the same parties. In the earlier suit, the defendant gave an undertaking that it will not directly or indirectly deal in Active Pharmaceutical Ingredient (API), pharmaceutical products or formulation containing Vildagliptin alone or vildagliptin in combination with any other compound or API in any other form as may amount to infringement of Indian Patent No.212815 of the first plaintiff. Based on the undertaking given by the defendant, The Court passed a consent decree on 31/07/2015. The defendant admitted and accepted the rights of

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the first plaintiff in patent being IN 212815 and acknowledged the validity of patent in favour of the plaintiffs. Under such circumstances,

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A.No.3132 of 2020 in C.S.No.282 of 2018

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the defendant has no locus to challenge the validity of the suit patent.

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6.The learned counsel appearing for the respondents/plaintiffs, referring certain observations made by this Court in the order dated 12/07/2019, while dismissing the application to receive additional written statement and counter claim, pleaded that the present application is not maintainable.

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7.In response, the learned counsel for the applicant/defendant

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submitted that, the Commercial Appellate Division has clarified that the observations made are only for the purpose of assessing whether the counter-claim attempted to be filed by the defendant. Such observations relevant for the assessment of the said application and not extended

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beyond the same to the further proceedings in the suit or in course of trial.

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8.The learned counsel for the applicant/defendant further submitted

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that, as per the direction of this Court vide order dated 01/03/2021, a memo dated 12/03/2021 filed narrowing the list of documents from 17 to

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A.No.3132 of 2020 in C.S.No.282 of 2018

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12, which are relevant to the pleadings made in the written statement.

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9.On considering the material placed before the Court, the present

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application to receive additional documents is filed before commencement of the trial. The truthfulness of the documents are not disputed by the plaintiffs. The plea of resjudicata to maintain the defence is not available for the plaintiffs, after the clarification by the Division Bench vide order dated 01/02/2021. That apart, when specific defence that the plaintiff had obtained patent by misrepresentation and hit by nondisclosure clause ipleaded in the written statement, whether the consent decree dated 31/07/2015 itself a valid decree or not is an issue to be decided in the trial. Also, to be noted that, even if the patent granted for plaintiffs is valid, the validity period is also under dispute and for deciding that issue, the 12 documents enlisted in the memo dated 12/03/2021 relied by the defendant may be of assistance to the court.

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10.Hence, the application in A.No.3132 of 2020 to receive the following 12 documents out of 17 documents, is allowed. No order as to

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A.No.3132 of 2020 in C.S.No.282 of 2018

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costs.

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*Sl.* *No.*	Do c. *No.* *Date*	*Particulars*	*Relevance to the* *Written statement*
1.	1 09.12.1999	US Patent No.6,166,063 granted to application No.09/458,224 to the plaintiff	Para 8 of the Written Statement-Non- Disclosure under Section 8 of the patent Act alleged. Docuemnt pertains to abandoned US Patent application, which has been wrongly disclosed by the plaintiff aspending.
2.	2 09.12.1999	European patent appln. PCT/ EP1999/009708 published in EP1 137 635 B1	This doucment is the PCT Application based on which Indian Patent has been granted, which refers to No.1
3.	4 28.11.2005	First Examination Report (FER) for impugned patent.	Issued by Patent Office seeks disclosure from plaintiff under Section 8 of Patents Act and also citing already
			published Patents.
4.	5 15.11.2006	Replyto FER
5.	6	EP 1137635	European Patent granted, based on which Indianpatentgranted

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A.No.3132 of 2020 in C.S.No.282 of 2018

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*Sl.* *No.*	Do c. *No.* *Date*	*Particulars*	*Relevance to the* *Written statement*
6.	7 14.05.1998	Teaching of WO98/19998 entitled 'N' substituted-2 cyanophrrolidines	This document has been referred to query No.4 of Document No.4 (FER)
7.	8	WO98/1998	Non-Disclosure u/s 8
8.	9	Web publication	Explaning that
			Adamantane, the addition of which 2-
			cyanopyrrolidine is
			claimed as the
			invention is non-
			patentable since it is a metabolite u/s 3(d)
9.	13 27.03.2003	Communication issued to the	Non-Disclosure u/s 8
		plaintiff by the European Patent Office
10.	14 25.06.2003	Response submitted by the plaintiff to the EPO	Non-Disclosure u//s 8
11.	15 04.06.2001	Form 3 & 5 filed by the Patentee in Application No.09/209,068	Form 3 filed by plaintiff along with patent application as required under Section 8, which is deficient as seen from Documents No.1 & 4.

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A.No.3132 of 2020
in
C.S.No.282 of 2018

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Sl. Do Date Particulars Relevance to the
c. Written statement
No.
No.
12. 16 04.06.2000 US Patent Non-Disclosure u/s 8
No.6,011,155 since a correction made
granted for to the US patent was
Application not disclosed to the EU
No.09/458,224 patent office based on
which Indian Patent
was granted.
Sd./-G.J.J
19.04.2021
//Certified to be true copy//
Dated at Madras this the day of 2021.
COURT OFFICER(O.S.)

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From 25th Day of September 2008 the Registry is issuing certified copies of the Orders/Judgments/Decrees in this format. JJ 25/05/2021

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Venkata Narayana Active Ingredients Pvt. Ltd. v. Novartis Ag and another

Case brief

What is this about?

What did the court decide?

Venkata Narayana Active Ingredients Pvt. Ltd. v. Novartis Ag and another

Case brief

What is this about?

What did the court decide?

What the court decided

A compact analysis

Issues for consideration

Statutes considered

Parties & counsel

Coram

Case details

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