Whether proceedings in an infringement suit are liable to be stayed under Section 10 of the Code of Civil Procedure (CPC) owing to a declaratory suit previously filed by the other party in a different civil court?
Title: Bristol Myers Squibb Holdings Ireland Unlimited Company v. Natco Pharma
Subject matter of patent: Two Indian patents bearing numbers IN 243917 (Patent ‘917) and IN 247381 (Patent ‘381) containing the Markush structure and the specific compound Apixaban respectively were the basis of conflict in this case.
- The Defendant Natco Pharma filed a civil suit in Hyderabad seeking a declaration that Apixaban was in public domain and also requested the Court to issue a permanent injunction against Bristol Myers from harassing them for alleged infringement or threatening to do so.
- The Plaintiff Bristol Myers filed the instant suit in the High Court of Delhi to permanently restrain Natco from infringing patents ‘917 and ‘381.
- Natco on their part argued that the suit proceedings have to be automatically stayed given the ongoing civil suit in Hyderabad which is the earlier instituted suit.
Submissions by Plaintiff
- Patent ‘917 is the senior patent containing a Markush structure which could result in millions of compounds. The Markush claim in the said patent has a wide coverage, but does not specifically disclose Apixaban. Therefore, Apixaban is not the subject matter offered protection in Patent ‘917.
- The subject matter of the infringement suit and the declaration suit in Hyderabad are not on the same subject matter and hence, Section 10 of the CPC is not triggered. The civil suit in Hyderabad concerns the senior patent ‘917 while the infringement suit is for patent ‘381.
- The Hyderabad suit has been filed under Section 105 of the Act, but the requirements under the said provision have not been fulfilled by Natco.
Submission by Defendant
- Patent ‘917 held by Bristol Myers in its written description covers Apixaban but does not specifically disclose it in the claims and thereby surrenders to the public any right to be exercised with relation to Apixaban.
- Bristol Myers claims that Apixaban is the subject matter of IN ‘381 and not IN ‘917. It has, however, admitted that the broad disclosure in Patent ‘917 includes Apixaban. This raises an apprehension that they are trying to secure monopoly by way of evergreening their patent.
- The Hyderabad suit was instituted under Section 34 of the Specific Relief Act, 1963.
For Section 10 of the CPC to be applicable it is required that the Hyderabad court be competent to grant the relief sought in the earlier suit, (the declaration of non-infringement) and in the subsequent suit (instant infringement suit by Bristol Myers). The relief claimed in the suit pending before the Hyderabad Court is of declaration under Section 34 of the Specific Relief Act to the effect that the defendant is entitled to manufacture and market APIXABAN because the plaintiff no. 1 herein, though having disclosed the same in the senior patent, having not claimed a patent in it. This is a patent dispute and the Patents Act is the sole governing legislation applicable to this. Therefore, only a court that is competent to rule on the validity of the contested patent will count as an appropriate forum for the applicability of Section 10 of the CPC.
Natco has claimed that the Hyderabad suit was instituted under Section 34 of the Specific Relief Act and hence, it need not comply with requirements under Section 105 of the Act. This argument is untenable. The language of Section 105 of the Act includes a non-obstante clause. This means that a suit for declaration of non-infringement of patents will be governed only by the Patents Act. Therefore, the fact that Natco did not file documents as required by Section 105 defeats their case.
Therefore, the earlier institution of a civil suit in Hyderabad does not stay the proceedings in the infringement suit filed by the patentee Bristol Myers.
2020 SCC Online Del 200