INDIA: HC clarifies jurisdiction of revocation petitions and power to transfer cases between Courts
In the recent case of Eris Lifesciences Limited vs. Controller of Patents & Anr. [ C.O.(COMM.IPD-PAT) 3/2022] and MacLeods Pharmaceuticals Ltd vs. The Controller of Patents & Anr. [C.O.(COMM.IPD-PAT) 38/2022], the Delhi High Court ruled that it lacks the authority to transfer proceedings between two separate High Courts. Such a power of transfer between High Courts can only be exercised through Section 25 of the Indian Code of Civil Procedure and lies solely with the Supreme Court.
The present case pertains to Patent no.IN243301 (hereinafter “IN’301”), filed by Respondent no. 2 (Boehringer) in respect of pharmaceutical preparations ‘LINAGLIPTIN’ and variants thereof.
The petitioners had filed two revocation petitions i.e., C.O. (COMM.IPD-PAT) 3/2022 on 24th February 2022 and C.O.(COMM.IPD-PAT) 38/2022 on 17th February 2022 with respect to IN’301 before the present Court under Section 64 of the Indian Patents Act (hereinafter ‘the Act’). Consequently, the Respondent no.2, owners of the patent, filed suits for infringement before the High Court of Himachal Pradesh. In the said suits, an interim injunction was granted and an appeal against the said injunction order was stated to be pending in one of the suits.
Thereafter, the Respondent no.2 filed two applications seeking transfer of the said revocation petitions, thereby consolidating the same with the suits for infringement of IN’301 bearing No. COMS 7/2022 and COMS 3/2022 pending before the High Court of Himachal Pradesh.
For the transfer of revocation petitions, the Respondent no. 2 contended that the IN’301 was expiring on 18th August, 2023 and that in any case, the grounds raised for seeking revocation and the defences raised in the injunction suit would be similar in view of Section 107 of the Act. The Respondent no. 2 further contended that the subject patent was also the subject matter of another suit pending in appeal before the ld. Divisional Bench of this Court bearing title Boehringer Ingelheim Pharma GMBH & Co. KG & Ors. vs. Vee Excel Pharmaceuticals Private Ltd. and Ors. [CS (COMM) 239/2019], wherein the Court noted that,
“…I am of the prima facie view that the suit patent of the plaintiffs, i.e., IN'301 is vulnerable to revocation on the ground of prior claiming in terms of Section 64(1)(a) of the Patents Act. I am also of the prima facie view that by filing multiple patent claims in respect of the same invention, the plaintiffs have made an attempt towards evergreening the invention and re-monopolizing the same. These attempts on behalf of the patentees strike at the root of patent law in India. The aforesaid conduct of the plaintiffs defeats the rights of the manufacturers of generic drugs such as the defendant companies and is also detrimental towards the public interest.”
Maintainability of the Suit
With respect to the question of maintainability of the suit, the Hon’ble Court opined that a revocation petition can be filed wherever the effect of the patent is felt. The Hon’ble Court relied on the judgement Dr. Reddy’s Laboratories Limited & Anr. v. the Controller of Patents & Ors. [C.O.(COMM.IPD-PAT) 3/2021], where the Court held that,
“…Thus, the expression ‘High Court having territorial jurisdiction in that State or Union Territory’ in case of revocation petitions would have to be decided on the basis of both the static effect and the dynamic effect of the grant of the patent. The place where the commercial interest of the applicant is affected would also be a relevant consideration to determine jurisdiction.”
Since, the subject patent was granted by the Delhi branch of the Patent Office, the Hon’ble Court held that the revocation petition filed by the Petitioner before this Court was maintainable under the Act.
Transfer of the revocation petitions from one jurisdiction to another
Rule 26 of the Intellectual Property Division (IPD, Delhi) Rules reads as follows:
“Consolidation of IPR subject matters or cases or proceedings or disputes – Where there are multiple proceedings relating to the same or related IPR subject matter, irrespective of whether the said proceedings are between the same parties or not, the Court shall have the power and the discretion, wherever appropriate, to direct consolidation of proceedings, hearings, and also to direct consolidated recording of evidence/common trial and consolidated adjudication. If the Court is of the opinion that any matter pending before a Commercial Court is to be consolidated with a matter pending before the IPD, it may exercise powers of transfer under Section 24, Code of Civil Procedure, 1908 for transfer and consolidation of such matter to itself.”
Therefore, with regard to the issue of transfer of the revocation petitions pending before the Delhi High Court to the High Court of Himachal Pradesh, the Hon’ble Court emphasized that the powers of consolidation under Rule 26 can be exercised by the Intellectual Property (‘IP’) Division of this Court, to consolidate proceedings relating to the same IP asset, provided they are pending either before the IP Division or before any of the Commercial Courts in Delhi. Such power does not extend beyond the territorial jurisdiction of the Delhi High Court. The said power of transfer between two High Courts, can only be exercised in terms of Section 25 CPC, by the Supreme Court only.
Given that neither party had sought the transfer of the revocation petitions to the High Court of Himachal Pradesh by filing any transfer petition before the Supreme Court, the Hon’ble Court dismissed the applications filed by the Respondent no.2.
The case underscores the nuanced considerations surrounding jurisdiction, maintainability, and the scope of transfer powers within the context of patent revocation and infringement cases.