Monsanto Technology LLC & Ors. v. Nuziveedu Seeds Ltd. & Ors.

Relevant Acts and provisions

Code of Civil Procedure, 1908

Section Order XXXIX Rule 1

Patents Act, 1970

Section 3(j)Section 64

Provisions considered: Section 3(j) and Section 64 of the Patents Act, 1970, read with Order XXXIX of the Code of Civil Procedure, 1908.

Brief facts

Monsanto licensed its patented Bt cotton technology to Nuziveedu Seeds under a sub-licence providing for trait fees. After Monsanto terminated the agreement over a trait-fee dispute, it sued Nuziveedu for patent infringement and sought an interim injunction. Nuziveedu counter-claimed for revocation, contending the patent was barred by Section 3(j) as a biological process. The Single Judge granted a limited interim injunction without deciding patentability, but the Division Bench itself examined and upheld the Section 3(j) objection, effectively allowing the revocation counter-claim summarily.

Issues before the Court

1. Could the Division Bench, in an appeal against an interim injunction, summarily decide the exclusion under Section 3(j) and allow the revocation counter-claim without a trial?
2. Was the interim arrangement granted by the Single Judge an appropriate exercise of discretion?

Court's findings

The Court held that Section 64 of the Patents Act, which permits revocation on a counter-claim in a suit, presupposes consideration of the claims in accordance with law, following the procedure prescribed by the Code of Civil Procedure for framing issues and taking evidence, and not summary adjudication without trial. The Court held that whether the plaintiffs' DNA construct and Bt trait technology fell within the exclusion in Section 3(j) involved complicated mixed questions of law and fact concerning biotechnology that required expert evidence.

The Court observed that the defendants had themselves argued before the Division Bench that these issues were too complex to be decided without a full trial, making it inconsistent for the same issues then to be decided summarily in their favour.

The Court held that the Division Bench ought to have confined itself to reviewing the correctness of the interim injunction and, finding the Single Judge's arrangement just, set aside the Division Bench's order and remanded the suit for full trial.

Decision

Division Bench order set aside; the Single Judge's interim order restored; suit and revocation counter-claim remanded for disposal after a full trial.

Keywords

Biotechnology Patent Counter-claim Interim Injunction Patent Eligibility Section 3(j) Summary Adjudication