The High Court Of Himachal Pradesh on 21^st April 2022 granted a preliminary injunction in favor of Boehringer Ingelheim International GMBH & CO. KG (plaintiffs), and against Macleods Pharmaceuticals Limited (defendants).

The order of April 2022 disposes an application preferred under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure by the plaintiffs, praying for interim directions during the pendency of the suit. The suit of the plaintiff is for passing of a decree of restraint and permanent injunction against the defendant from infringing the patent rights of plaintiff under Indian Patent No. 243301 covering Linagliptin in any from whatsoever covered by the subject patent granted by the Controller of Patents on October 05, 2010.

Counsel for the plaintiff have submitted argued that a preliminary injunction should be granted in their essentially because, ‘subject patent’ is old and well established;  ‘subject patent’ is commercially highly successful and extensively useful; admittedly, no party, including the defendant, raised any pre-grant opposition, post-grant opposition, including against the quality and strength of the ‘subject patent’; the patent was granted in favour of the plaintiffs after following the substantive provisions of the The Patents Act, 1970;  no challenge was ever put forth by the defendants to the ‘subject patent’ except immediately before the commercial launch of its infringing product in the month of February 2022, when a revocation petition was filed by the defendants under Section 64 of the Patents Act. It was argued that above facts clearly and categorically demonstrate that there exists a prima facie case in favour of the plaintiffs and balance of convenience is also in their favour and in this backdrop, in case, ad-interim order is not confirmed and the defendant is permitted to infringe the ‘subject patent’ of the plaintiffs, then, the plaintiffs shall suffer irreparable loss, which cannot be compensated monetarily as all the hard work that has gone into the invention of the product in issue and getting it patented would be washed away.

Counsel for the respondent argued that the applicants, have not approached the Court with clean hands as fact of the matter is that the applicants had obtained two patents, i.e. Patent No. 227719 (hereinafter to be referred as ‘IN 719’) for the “Markush” formula being the ‘genus’ patent, which expired on 21^st February, 2022 and subject patent IN 301, which is a ‘species’ patent and both patents were granted for the same invention as it is nowhere disclosed either in the plaint or in the application as to what was the inventive step capable of industrial application, which distinguished patent IN301 from IN719.  It was argued that respondent has rightly challenged the ‘species’ after the ‘genius’ has expired and therefore a credible challenge stood made to the patent in issue by the respondent, therefore, no interim relief be granted. It was argued that in addition to the settled principles of prima facie case, balance of convenience and irreparable loss, the plaintiffs also have to satisfy that there is no credible challenge to the ‘subject patent’ which in the present case, the plaintiffs have not been able to demonstrate and in this view of the matter, the ad-interim injunction granted in favour of the plaintiffs was liable to be vacated and the prayer of the plaintiffs for interim injunction is liable to be dismissed.

The Court granted an injunction in favour of the plaintiffs during the pendency of the civil suit, and held that:-

1. The patent in issue, was granted in favour of the plaintiffs and is an old patent. On the other hand, admittedly, the defendant does not have any patent qua the infringing product and no challenge, either to the application filed by the plaintiffs for grant of patent was laid by the defendant nor any post patent challenge was laid by it.
2. In  light of law laid down by Hon’ble Supreme Court in M/s Bishwanath Prasad Radhey Shyam, grant of patent does not guarantee the validity of a patent, which can be challenged before the High Court on various grounds in revocation or infringement proceedings, but the factum of a patent being there in favour of the plaintiffs and the factum of no pre or post grant challenge to the same by anyone, including the defendant, (except recently by way of a revocation petition which was filed in close proximity to the launch of the infringing product) does creates a prima facie case and balance of convenience in favour of the plaintiffs.
3. According to the defendant, IN301 is nothing but evergreening of IN719. The Court however took the view that at this stage when the Court has to primarily see as to whether the plaintiffs have made out a case for the grant of interim relief as prayed for, Court cannot make any observation as to whether IN301 is evergreening of IN719 because this is an issue which shall be decided by the Court in light of the defence that may be taken by the defendant coupled with the evidence which may be led by the parties in support of their respective contentions.

Another application was filed under Order VII, Rules 11 read with Section 151 of the Code of Civil Procedure, on behalf of defendant, on the grounds that the suit is barred in law in terms of the provisions of Section 53 (4) of the Patents Act, 1970 and the suit is improperly filed in as much as the person signing as ‘constituted attorney’ of the plaintiffs is barred by law from representing the plaintiffs.

The court dismissed the said application and held that:-

• Order VII, Rule 11 of the Civil Procedure Code, envisages that the plaint shall be rejected where it does not disclose a cause of action or where the suit appears from the statement in the plaint to be barred by any law.
• In the present case, the applicant did not argue that the plaint is liable to be rejected as it does not disclose a cause of action, and therefore the Court held that it will not dwell on this aspect of the matter.
• The contention of the applicant is that the plaint is liable to be rejected as the suit appears from the statement in the plaint to be barred by law in terms of the provisions of Section 53 (4) of the 1970 Act. 
• Court held that the contention of the applicant that the suit in hand is liable to be rejected being barred by law in terms of Section 53 (4) of the 1970 Act is totally misconceived. Sub-section (4) of Section 53 of the 1970 Act only provides that notwithstanding anything contained in any law for the time being in force, on cessation of the patent right, inter alia, on expiry of the term of the patent, the subject matter covered by the said patent shall not be entitled to any protection.
•  In other words, as per this particular statutory provision, the protection which is available to a patent holder during the term of patent ceases after the expiry of the term. In the present case, it is no one’s case that the term of the subject patent has expired.  The Court also held that by no stretch of imagination, it can be said that in the light of the language of Section 53 (4) of the 1970 Act, the plaint in hand is liable to be rejected being barred by law. Section 53 (4) of the 1970 Act nowhere bars the plaintiffs or a party similarly situated as the plaintiffs, on the strength of the averments as are contained in the plaint from filing the suit. The words “barred by any law’ have to be construed strictly by the Court and the same cannot be confused by a plaintiff ultimately not being entitled to the relief being prayed for by it on account of certain statutory provisions.
• Coming to the second objection which has been taken with regard to the suit not having been filed by a duly authorized person, this Court held that whether the suit, as it has been filed, is maintainable or not is an issue which cannot be decided by this Court under the provisions of Order VII, Rule 11 (d) of the Civil Procedure Code.