FMC Corporation & Ors. v. Natco Pharma Limited

Relevant Acts and provisions

Patents Act, 1970

Section 108Section 48Section 64(1)(a)Section 64(1)(e)

Provisions considered: Sections 48, 64(1)(a), 64(1)(e) and 108 of the Patents Act, 1970.

Brief facts

FMC Corporation and its group companies, co-patentees of an Indian patent for a process of preparing an insecticide, filed a quia timet suit against Natco Pharma to restrain use of a claimed intermediate compound in Natco's product. Natco, which had filed a revocation petition against the relevant claim, admitted using the intermediate but pleaded that the claim was invalid as anticipated by prior claiming and prior publication through a related patent and its international counterpart.

Issues before the Court

1. Did the defendant's admitted manufacture and use of the intermediate establish a prima facie case of infringement under Section 48?
2. Was the claim liable to be revoked as anticipated by prior claiming or prior publication?
3. Did the pending revocation petition amount to a credible challenge sufficient to defeat interim relief?

Court's findings

The Court examined the rival cases on anticipation in detail, including the parties' competing readings of the earlier patent and its international counterpart against the asserted claim, and the significance of statements made by the plaintiffs during prosecution of the earlier patent. It noted that the defendant had raised substantial questions on prior claiming and prior publication that could not be dismissed as unsubstantial at the interim stage.

The Court held that, with the suit patent due to expire within about two weeks of the hearing and the defendant having already commenced commercial manufacture with significant investment, any injury to the plaintiffs pending trial would be compensable in damages.

The Court held that restraining an ongoing commercial operation at this late stage would cause disproportionate harm to the defendant, and that the balance of convenience accordingly favoured the defendant.

Decision

Application for interim injunction dismissed; the balance of convenience was held to favour the defendant.

Keywords

Interim Injunction Novelty Patent Infringement Prior Art Revocation