Defendants claim that the Plaintiff is not entitled to an interim injunction for concealment of facts and material variations deserves to be rejected for the reason even if there has been amendment in the plaint, this Court has to construct the claim on the basis of what is claimed in the patent documents, as has been noted above. Further the Insecticides Registration Committee has no jurisdiction to decide on Patent registration as held in the decision reported as Shogun Organics Ltd. v. Union of India (2013) SCC Online Ker 22792. Finding by the Insecticides Registration Committee being finding of a body which has no effect on the validity of the Patent, mere non-disclosure of the finding of the Insecticides Board prinia facie cannot be held to be material suppression of facts and injunction refused on the said count.

            MIPR 2018 (2) 0001=    MANU/DE/0772/2018

IN THE HIGH COURT OF DELHI

UPL Limited

vs

Pradeep Sharma and Anr.

IA 9585/2017 IN CS (COMM) 556/2017 DECIDED ON: 21.02.2018

Judge

Mukta Gupta, J.

Counsel

For Appellant/Petitioner/Plaintiff: Amit Sibal, Sr. Adv., Rajeshwari, Aditya Gupta,

Tahir A.J. and Kumar Chitranshu, Advs.

 

For Respondents/Defendant: J. Sai Deepak and Avinash K. Sharma, Advs.

 

Cases referred

Alphaptmrm Pty Ltd. v. Wyeth (2009) FCA 945

Herbert Markman v. Westview 52 F. (3d) 967: 517 US 370

  1. Hoffinan-LA Roche Ltd. v. Cipla Ltd. FAO (OS) 188/2008

Jeniric/Pentron Inc. v. Dillion Company (205 F. 3d 1377)
Smithkhne Beecham Pic v. Generics (UK) Ltd. 2001 WL 1346930

Warner Jenkinson Co. v. Hilton Davis 520 U.S. 17 (1997)

 

3M Innovative’ Properties Ltd. and Anr. v. Venus Safety & Health Pvt. Ltd. and Anr. FAO

(OS) No. 292 of 2014

Bislnvanath Prasad Radltey Shyam v. Hindustan Metal Industries MANU/SC/0255/

1978: (1979) 2 SCC 511: AIR 1982 SC 1444: (1979) 2 SCR 757   Bristol-Myers Squib Co. and Ors. v. /.D. Joshi and Anr. MANU/DE/1889/2015: 2015

(64) PTC 135 (Del): MIPR 2015 (2) 301

Cipla Ltd. v. Novartis AC MANU/DE/0608/2017: 2017 (70) PTC 80 (Del): 2017 VII AD

(Delhi) 19: 239 (2017) DLT 41: MIPR 2017 (2) 241

Hoffmann-La Roche, Ltd. & Anr. v. Cipla Ltd. MANU/DE/3672/2015: 225 (2015) DLT 391: MIPR 2016 (1) 1: 2016 (65) PTC 1 (Del)

Franz Xaver Huenier v. New Yash Engineers MANU/DE/0015/1997: AIR 1997 Delhi 79: 1996 (25) ArbLR 522 (Delhi): 62 (1996) DLT 291: 1996 (37) DRJ 14: (1996) ILR 2 Delhi 791: 1996 (16) PTC 232 (Del): 1996 RLR 280: 19962 RRR 532

 

National Development Corporation v. Delhi Cloth and General Mills Co. Ltd, (1979) SCC
Online Del 206

Raj Parkash v. Mangat Ram Chowdhry & Ors. MANU/DE/0152/1977: (1977) ILR 2
Delhi 412: AIR 1978 Delhi 1: 1977 RLR 440

S.P. Chengalvarai/a Naidu v. Jagannath MANU/SC/0192/1994: AIR 1994 SC 853:
1994 (1) APLJ (SC) 66: II (1993) BC 546 (SC): 1994 (1) BLJR 216: 1994 CivilCC 131:
1994 GLH (1) 81: JT 1993 (6) SC 331: 1994-1-LW 21: 1994 (I) OLR (SC) 201: 1994 (1)
PLJR 39: (1995) 109 (1) PLR 293: 19941 RRR 253: 1993 (4) SCALE 277: (1994) 1
SCC 1: (1993) Supp 3 SCR 422: 1994 (1) UJ 1

Shogun Organics Ltd. v. Union of India (2013) SCC Online Ker 22792

Strix Ltd. v. Maharaja Appliances Ltd. MANU/DE/2174/2009: MIPR 2010 (1) 181
TecXC Wireless v. Mobile Antenna Technologies CS (OS) No. 1989/2010

 

Telentecanicjue and Controls (I) Ltd. v. Schneider Electric Industries SA MANU/DE/1264/
2001: 94 (2001) DLT 865

TVS Motor Company v. Bajaj Auto OSA Nos. 91 and 92 of 2008

UCB Farchim SA v. Cipla Ltd. & Ors. MANU/DE/0297/2010: 2010 (42) PTC 425 (Del): 167 (2010) DLT 459: MIPR 2010 (1) 278 (

 

Insecticides Act, 1968

Section 9

Section 9(3)

Patents Act, 1970

Section 3(d)

Section 3(e)

Section 8

Section 10(4)

Section 10(4)(c)

Section 11(1)

Section 47

Section 64

Section 107

Section 117G

HEAD NOTE

Insecticides Registration Committee has no authority to decide infringement of Patents.  Plaintiff claim for relief of interim injunction regarding infringement of its three patents and prayer for an order of interim injunction was liable to be allowed. As the novelty of suit patent cannot be overlooked. Therefore the composition of products for registration of herbicidal composition of Plaintiff and Defendant were same. Claims of Plaintiff’s suit patents comprise of 5-10 per cent metsulfuron methyl and Defendants 5 per cent weight of metsulfuron methyl.

 

Plaintiff’s suit patents claimed 70-80 per cent by weight of sulfosulfuron and Defendant’s product registration consisted of 75 per cent weight of sulfofulfuron. Q.S. filler (precipitated silica) was also noted in Plaintiff’s claim besides, 1 per cent weight of silicon defoarmer. Moreover claim of Defendant was that, its product contained polyoxyethyline Sorbitan, which was also there in Plaintiff’s suit patent IN 551, fatty acid ester which is missing in Defendant’s product is also missing in Plaintiff’s suit patent IN 551. Thus, even as per Defendant, only difference between Plaintiff’s and Defendant’s product was absence of a stabilizer which could not be an essential ingredient. A comparison of claim of Plaintiff’s suit patent and Defendant’s product revealed that,   Defendant’s product registration related to suit patent of Plaintiff. It was not the case of Plaintiff and Defendant that, composition was not a stable compound and an addition of.l to 10 per cent weight of stabilizer being added further would not make compound as a different compound not infringing Plaintiff’s patent, as all essential ingredients with their requisite composition and percentage were same.

Defendants claim that the Plaintiff is not entitled to an interim injunction for
concealment of facts and material variations deserves to be rejected for the reason
even if there has been amendment in the plaint, this Court has to construct the claim
on the basis of what is claimed in the patent documents, as has been noted above.
Further the Insecticides Registration Committee has no jurisdiction to decide on
Patent registration as held in the decision reported as Shogun Organics Ltd. v. Union
of India (2013) SCC Online Ker 22792. Finding by the Insecticides Registration
Committee being finding of a body which has no effect on the validity of the Patent,
mere non-disclosure of the finding of the Insecticides Board prinia facie cannot be
held to be material suppression of facts and injunction refused on the said count.
The Defendant having not been able to demonstrate invalidity of the suit patents
and a pre-grant opposition to the Patent of the Plaintiff already having been
dismissed by the Appellate Board and in writ petition settlement arrived at with
Gharda Chemicals, the Plaintiff has made out a strong prima facie case in its favour.
[See National Development Corporation v. Delhi Cloth and General Mills Co. Ltd. (1979)
SCC Online Del 206.] The Defendant was not to launch its product till
19″‘ November, 2017 and thus even if it has launched now during the interregnum,
no loss or irreparable harm would be caused in directing the Defendant to not
launch the product pending decision in the suit, as held in the decision reported as
Bristol-Myers Squib Co. and Ors. v. ].D. joshi and Am. 2015 (64) PTC 135. The balance of
convenience also lies in favour of the Plaintiff.

 

JUDGMENT

Mukta Gupta J.

  1. The Plaintiff which is a company engaged in the manufacture and sale of
    insecticides, fungicides, herbicides, weedicides, fumigant, PGR and rodenticides
    claims that it is the owner of the Patent IN 206130 (in short IN 130), IN 194225 (in
    short IN 225) and IN 244551 (in short IN 551). In the present suit, the claim of the
    Plaintiff is infringement of its three Patents and seeks an order of interim injunction
    in its favour pending hearing of the suit.
  2. IN 225 titled “a process of preparing a chemically stable synergistic herbicidal
    composition” is a process patent, and IN 130 titled as “a chemically stable synergistic
    herbicidal composition” is a product patent whereas IN 551 titled as “a stable
    synergistic herbicidal composition” is both a product and process patent.

 

  1. Claim of the Plaintiff is that Metsulfuron Methyl and Sulfosulfuron are compounds
    which are used to control weeds without affecting the main crop. Metsulfuron
    controls grassy weeds but has no control on broad leaf weeds, whereas Sulfosulfuron
    has no control on grassy weeds but controls broad leaf weeds. Further, the two
    compounds are not physically and chemically compatible, hence no single
    composition containing both the compounds was available. Plaintiff claims having
    developed a composition comprising of these compounds along with suitable
    excipients such as inert fillers, stabilizer (0.1-1 wt per cent), defoamer (0.1-1 wt per
    cent), wetting and dispersing agents. The composition is in the form of wettable
    granules (WG). The uniqueness of the composition is that it is effective against both
    grassy as well as broad leaf weeds.
  2. On 6th January, 2003 the Petitioner filed its patent application 15/MUM/2003
    titled “A Process For Preparing Chemically Stable Synergestic Herbicidal
    Composition” whereon the process patent IN 225 was granted. On 18th January, 2004
    Plaintiff filed its patent application 664/MUM/2004 titled “A Chemically Stable
    Synergistic Herbicidal Composition” as a divisional application of Indian
    Application 15/MUM/2003. Pre-grant opposition was filed by Gharda Chemicals
    in respect of the application 664/MUM/2004 challenging the novelty and
    inventive steps of the invention which was dismissed vide order dated
    25th January, 2007 by the Patent Office resulting in the Plaintiff being granted the
    product patent IN 130. Gharda Chemicals filed a writ petition before the High Court
    wherein the order dated 25th January, 2007 was set aside and the Controller of Patents
    was directed to dispose of the application of Gharda Chemicals afresh within a
    reasonable period. The said application was dismissed on 29th November, 2007. On
    Gharda Chemicals filing a writ petition challenging the two patents IN 225 and
    IN 130 before the High Court of Mumbai, which were transferred to Intellectual
    Property Appellate Board (in short the IPAB) under Section 117G of the Patents Act,
    parties entered into a settlement on 3rd October, 2008 wherein Gharda acknowledged
    Plaintiff to be the owner of IN 225 and IN 130 and agreed not to infringe the two suit
    patents. Plaintiff thus claims that a pre-grant opposition of a party challenging the
    novelty and inventive steps of the invention not having been sustained, the Defendant
    cannot now challenge the same by taking the defence under Section 107 of the
    Patents Act. Various companies including Nagarjuna Agrochem Ltd. Shriram
    Fertilizers, Tata Chemicals Ltd., Coromandal International Ltd., Gharda Chemicals
    Ltd. and New Chemi Industry have already been granted licenses by the Plaintiff in
    respect of its patents. Plaintiff claims that it came to know from the market sources
    and field executives that Defendants are participating in a tender floated by
    Directorate of Industries and Enterprises Promotion, U.P. for manufacture and supply
    of Sulfosulfuron (75 per cent) + Metsulfuron Methyl (5 per cent) WG. It was further
    revealed that Defendants have applied for registration under Section 9 of the
    Insecticides Act, 1968 for the composition of Sulfosulfuron (75 per cent) + Metsulfuron
    Methyl (5 per cent) WG which is the composition as per the Patents of the Plaintiff.
    The Plaintiff alone having right to manufacture and sell Sulfosulfuron (70-80 per
    cent) + Metsulfuron Methyl (5-10 per cent) WG i.e. wettable granules meaning that
    composition is in the form of granules, the Defendant is liable to be injuncted from
    infringing the Plaintiff’s Patents.
  3. Rebutting the contentions of learned Counsel for the Defendant challenging the
    novelty and inventive steps of the Plaintiff’s Patents, Plaintiff claims that uniqueness
    of the composition of the Plaintiff’s Patents is that the composition is affective against

 

both grassy as well as broad leaf weeds. The claim of the Defendant that its product is different for the reason it contains sorbitan ester and HMX/ammonium sulphate does not make a difference for the reason the two are minor ingredients and their absence do not make any difference. The Defendants claim that the Plaintiff is not the inventor of the suit patent but Dr. C.P. Singh whose publication is a prior art deserves to be rejected for the reason Dr. C.P. Singh only suggested that Metsulfuron and Sulfosulfuron be used one after another and not as a combination whereas Plaintiff’s inventions use the two compounds synergistically. Further the findings of Dr. C.P. Singh are entirely different from the inventions claimed in the suit Patents IN 130, IN 551 and IN 225. Dr. C.P. Singh has never contested the Plaintiff’s patents till date. Defendant cannot also claim lack of novelty in view of the prior art US 182 for the reason US 182 did not anticipate suit patent and disclosed composition comprising a singular chemical compound with a surfactant and does not disclose the composition of metsiilfuron and sulfosulfuron together with adjuvants as claimed. A combined reading of US 182, US 301, Annual report of ICAR 2001 as well as report of Dr. Singh does not render the invention of the suit patents obvious.

  1. Further the Defendant has not made out any case for invention, not being an
    invention under Section 3(d) and/or 3(e) of the Patents Act. The Plaintiff having
    prima facie proved infringement and the Defendant having failed to make out a case
    of invalidity, injunction be granted in favour of the Plaintiffs. Reliance is placed on
    the decisions reported as Smithkline Beecham Pic Generics (UK) Ltd. 2001 VVL1346930;
    Raj Parkash v. Mangat Rani Chomilin/ & Ore.1 1LR (1977) II Delhi; Shogun Organics ltd.
    v. Union of India (2013) SCC Online Ker 22792; National Development Corporation v.
    Delhi Cloth and General Milts Co. Ltd. (1979) SCC Online Del 206; Strix Ltd. v. Maharaja
    Appliances Ltd.2 (2009) SCC Online Del 2825; Bristol-Myers Squib Co. and Ors. v. /.D.
    Joshi and Am.3 2015 (64) PTC 135; F. Hoffmann-La Roche Ltd. v. Cipla Ltd.4 225 (2015)
    DLT 391 (DB); Cipla Ltd. v. Novartis AC 5 2017 (70) PTC 80 [Del](DB); Telemecaniqne
    and Controls (I) Ltd. v. Schneider Electric Industries SA” 94 (2001) DLT 865 (DB)[Del]; 3M
    Innovative Properties Ltd. and Am: v. Venus Safety & Health Pvt. Ltd. and Anr. FAO (OS)
    No. 292 of 2014; Alphapltarm Pty Ltd. v. Wyetli (2009) FCA 945.
  2. Learned Counsel for the Defendant on [he other hand contends that both
    Sulfosulfuron and metsulfuron methyl were admittedly already known and not
    proprietary to the Plaintiff. Both substances are individually well recognized
    herbicides, metsulfuron methyl since 1986 and sulfosulfuron since mid-1990 and
    the combination of various sulfonylureas including these two have been known
    since 1990s. For the Plaintiff to even prima facie establish infringement it has to show
    that every element of the impugned product/composition falls within the scope of
    the specific claim of any of the suit patents asserted by the Plaintiff and if admittedly
    any essential element is missing then there can be no infringement. On a comparison
    of the two products, the difference between the compositions is evident. The product
    registration of the Plaintiff necessarily requires suspending agent, and a tallow

 

soap defoamer in addition to other defoamers and significantly high amount of wetting agents and dispersing agents. Additionally, the product registration does not contain polyoxyethylene sorbitan fatty acids ester and stabilizing agent. The claim of the Defendant being outside the scope of the suit patents is supported by the finding of a technical body i.e. the Registration Committee of the Central Government Insecticides Board as far back as in 2006 when it was held that Defendant’s registration did not cover a composition which was allegedly prepared by a process IN 225. Plaintiff filed an appeal against this decision before the Statutory Authority in the year 2006 itself but did not pursue it. Plaintiffs denial that the appeal related only to the process patent IN 225 deserves to be rejected for the reason the suit relates to the three patents IN 130 being divisional to the process patent IN 225 and IN 551 being a patent of addition. The two product patents i.e. IN 130 and IN 551 do not have any existence outside the process patent IN 225 which also covers the composition. There is no claim by the Plaintiff that the Defendant is copying its process as per claim in 225. Further as noted above, there is no infringement of IN 551. The product covered by Defendants registration is outside the scope of the claims of the Plaintiff’s Patents, since several material and essential elements of the said claim (i.e. the stabilizer, absence of tallow soap as defoamer) are missing. In addition even the amount of wetting agents, dispersing agents and suspending agent is significantly higher in the product of the Defendant as compared to IN 551.

  1. Learned Counsel for the Defendant further contends that there is no infringement :
    of IN 551 as in the original cease and desist notice dated 2nd June, 2017 the Plaintiff
    does not refer to IN 551. The suit patents are liable to be revoked, inter-alia, on the
    ground of lack of entitlement of the Plaintiff to any rights in the alleged invention(s),
    anticipation by prior public use or prior public knowledge in India, anticipation by-
    prior publication leading to lack of novelty, obviousness and lack of inventive step,
    patents obtained by suppression of material facts from Patents Office, non-patentable
    invention under Section 3(d) and/or Section 3(e), insufficient and unclear
    description, violation of Section 8 of the Patent’s Act etc. The combination of the two
    compounds was first revealed by Dr. C.P. Singh at the G.B. Pant College of Agriculture
    and Dr. Singh has not been named as inventor in any of the three patents. Thus, the
    prior art being known, in prior public use and prior public knowledge, there being
    lack of novelty, and suppression of material facts, the suit patents being obvious,
    patent registrations are liable to be revoked.
  2. The suit patents also give unclear description as per the requirement of
    Section 10(4) of the Patents Act. The Plaintiff has failed to comply with the requirement
    of Section 8 of the Patents Act disentitling it to an interim injunction. A perusal of the
    plaint and replication makes it evident that the pleadings of the Plaintiff are
    inconsistent in respect of the claims of the suit patent. Though in the plaint tht
    Plaintiff claims that the suit patents protect a herbicidal composition consisting of ?
    mixture of the sulfosulfuron and metsulfuron, however as per the replication Plaintiff
    does not claim exclusivity over the combinations of sulfosulfuron and metsulfuror.
    methyl but on the combination of the active ingredients together with the excepient?
    as designed by the Plaintiff. The change of the stand of the Plaintiff is for the reason
    Defendants have been able to demonstrate in the written statement that there is no:
    even prima facie Plaintiff thus cannot now seek to employ the doctrine
    of equivalence or the pith and marrow doctrine or the doctrine of immaterial variant-
    in the light of specificity of the claim of the suit patents. Reliance is placed on th:

 

decisions reported as S.P. Chengalvaraya Naidu v. Jagannatli7 AIR (1994) SC 853; Bishwanatli Prasad Radhey Shy am v. Hindustan Metal Industries* (1979) 2 SCC 511; TenXC Wireless v. Mobile Antenna Technologies CS (OS) No. 1989/2010; TVS Motor Company v. Bajaj Auto (OSA Nos. 91 and 92 of 2008); UCB Farchim SA v. Cipla Ltd. & Os.9 2010 (42)’PTC 425; Warner Jenkinson Co. v. Hilton Davis 520 U.S. 17 (1997); Jeniric/Pentron Inc. v. Dillion Company (205 F. 3d 1377); F. Hoffman-LA Roche Ltd. v. Cipla Ltd. FAO (OS) 188/2008 and TecXC Wireless v. MoWfc Antenna Technologies CS (OS) No. 1989/2010 and Franz Xaver Huemerv. New Yash Engineers10 AIR 1997 Delhi 79.

  1. This Court in the decision reported as F. Hoffmann-La Roche Ltd. & Am. v. Cipla Ltd. 225 (2015) DLT 391 (DB) culled out the principles to construct a claim as under:
  2. For the above conspectus, pithily put, principles of claim construction could be summarized as under:-

(i) Claims define the territory or scope of protection (Section 10(4)(c) of the Patents Act, 1970).

(ii) There is no limit to the number of claims except that after ten claims there is an additional fee per claim (1st Schedule of the Act).

(iii) Claims can be independent or dependent.

(iv) The broad structure of set of claims is an inverted pyramid with the broadest at the top and the narrowest at the bottom (Manual of Patents Office-Practice and Procedure).

(v) Patent laws of various countries lay down rules for drafting of claims and these rules are used by Courts while interpreting claims.

(vi) One rule is that claims are a single sentence defining an invention or an inventive concept.

(vii) Different claims define different embodiments of same inventive concept.

(viii) The first claim is a parent or mother claim while remaining claims are referred to as subsidiary claims.

(ix) If subsidiary claims contain an independent inventive concept different from the main claim then the Patent Office will insist on the filing of a divisional application.

(x) Subject matter of claims can be product, substances, apparatus or articles; alternatively methods or process for producing said products etc. They may be formulations, mixtures of various substance including recipes. Dosage regimes or in some countries methods of use or treatment may also be claimed.

 

(xi) Where claims are ‘dependent’ it incorporates by reference ‘everything in the parent claim, and adds some further statement, limitations or restrictions’. (Landis on Mechanics of Patent Claim Drafting).

(xii) Where claims are ‘independent’ although relating to the same inventive concept this implies that the ‘independent claim stands alone, includes all its necessary limitations, and is not dependent upon and does not include limitations from any other claim to make it complete …. An independent Claim can be the broadest scope claim. It has fewer limitations than any dependent claim which is dependent upon it’. (Landis on Mechanics of Patent Claim Drafting)

(xiii) For someone wishing to invalidate a Patent the said person must invalidate each claim separately and independently as it is quite likely that some claims may be valid even while some are invalid.

(xiv) At the beginning of an infringement action the Courts in the United States conduct what is known as a ‘Markman hearing’ to define the scope of the claims or to throw light on certain ambiguous terms used in the claims. Although this is not technically done in India but functionally most Judges will resort to a similar exercise in trying to understand the scope and meaning of the claims including its terms.

In the case of 52 F. (3d) 967=517 US 370, Herbert Markman v. Westview the Courts held that an infringement analysis entails two steps:-

  • First step is to determine the meaning and scope of the Patent
    claims asserted to be infringed.
  • Second step is to compare the properly construed claim with the
    device accused of infringing

(xv) The parts of the claim include its preamble, transition phrase and the body. The ‘transition phrase’ includes terms like:-

  • Comprising;
  • Consisting;
  • Consisting essentially of;
  • Having;
  • Wherein;
  • Characterised by;

Of these terms some are open ended, such as ‘comprising’ which means that if the claim contains three elements A’, ‘B’ and ‘C’ it would still be an infringement for someone to add a fourth element ‘D’.

Further some terms are close ended such as ‘consisting of, i.e. in a claim of three elements, A ‘, ‘B’ and ‘C’ a Defendant would infringe if he has all three elements. In case the Defendant adds a fourth element ‘D’ he would escape infringement.

(xvi) Each claim has a priority date so that in a group of claims in a specification you could have multiple priority dates. This only means that if a patent application with certain priority date and claims was followed

 

by another application with different claims and different priority dates, then if they were consolidated or cognate with another application, each claim would retain the original priority date [Section 11(1)].

  1. Before proceedings further it would be appropriate to construct the claims of the
    Plaintiff and compare the same with the product of the Defendant on the principles
    laid down by the Division Bench in F. Hoffmann-La Roclie Ltd. (supra).
  2. The main claim of the Plaintiff’s process patent IN 194225 is as under:
  3. A process for preparation of a chemically stable synergestic herbicidal composition comprising steps:

(a) Preparing a Mixture-A in the following steps:

(i) Pre blending 5-10 per cent Metsulfuron Methyl active content, 20-40 per cent of sulfosulfuron active content and 0.1-10 per cent of inert filler;

(ii) Milling the pre blend,

(iii) Post blending the milled mixture to get the Mixture-A;

(b) Preparing a Mixture-B in the following steps:

(i) Pre blending 30-60 per cent of sulfosulfuron active content, 0.1-10 per cent stabilizer, 0.01-10 per cent inert filler, with 0.1-5 per cent wetting and 0.1-1 per cent dispersing agent;

(ii) Milling the pre blend;

(iii) Post blending the milled mixture to get the Mixture-B;

  • Making 10-40 per cent w/w of the composition, a Spray solution by
    mixing 10-100 parts Polyoxyethylene Sorbitan Fatty Acid Ester along
    with 1-10 parts defoamer and 50-500 parts water;
  • Charging completely the Mixture-A in a Roto Granulator, having a
    rotor and a pan, followed by mixing it with the help of the rotor for
    4-6 minutes;
  • Spraying 20-60 per cent of the Spray Solution, of step (c), to the mixture
    of step (d);
  • Operating the Roto granulator such that the rotor’s movement and the
    Pan’s movement are in a direction opposite to each other, to get
    agglomerates in size range of 75u-200u;
  • Charging completely the Mixture-B in the Roto Granulator of step (f)
    and mixing both the mixtures by operating the Roto granulator for 3-5
    minutes such that the pan is at a speed of 20-200 rpm and the rotor is at
    a speed of 500-3000 rpm, keeping movement of the rotor and that of the
    pan in the same direction, for layering the agglomerates;

(h) Spraying the remaining quantity (40-80 per cent) of the Spray Solution to the agglomerates of step (g), followed by mixing for another 10-15 minutes to get granules in size range of lOOu-lOOOp;

(i) Drying the granules of step (h) to get granules containing moisture content less than 0,5 per cent;

 

(j) Sieving the dried granules of step (i) to get 95-99 per cent w/w yield;

(k) Conditioning the resulting granules obtained in step (j), by passing the granules through an air chamber to get chemically stable synergistic herbicidal composition.

  1. A process as claimed in 1 wherein Metsulfuron Methyl is 5-7 per cent w/w of the composition.”
  2. In the Plaintiff’s product patent IN 206130, Claim Nos. 2 to 5 are similar,
    synergistically herbicidal composition as claimed in Claim No. 1 with minor
    variations of metsulfuron and sulfosulfuron ranging from 5 to 10 per cent and 75 to
    80 per cent. Claim No. 1 and Claims No. 6 to 12 of IN 206130 are as under:
  3. A chemically stable synergistic herbicidal composition comprising
    Metsulfuron Methyl, active content, 5 to 10 per cent by weight of composition,
    and, Sulfosulfuron, active content, 70 to 80 per cent by weight of composition,
    with 1 to 20 per cent w/w of inert fillers, 1.0 to 10 per cent w/w of
    Polyoxycthylene Sorbitan Fatty Acid Ester along with 0.1 to 10 per cent w/w
    of a stabilizer, 0.1 to 1 per cent w/w of a defoamer and 0 to 10 per cent w/w of
    wetting and dispersing agents.

2……….

  1. A Chemically stable synergistic herbicidal composition as claimed in claim 1,
    wherein Polyoxyethylene Sorbitan Fatty Acid Ester is Sorbitan Monooleate.
  2. A Chemically stable synergistic herbicidal composition as claimed in claim 1,
    wherein the inert filler is a mixture of Attapulgite 30-40 per cent w/w and
    precipitated silica 60-70 per cent w/w of the total inert filler.
  3. A composition as claimed in any of the claims 1 to 7, wherein the stabilizer
    is ammonium sulphate.
  4. A chemically stable synergistic herbicidal composition as claimed in any of
    the Claims 1 to 8, wherein the stabilizer is hexamethylene tetramine.
  5. A chemically stable synergistic herbicidal composition as claimed in any
    of the Claims 1 to 9, wherein the defoamer is Silicon Oil Derivative.
  6. A chemically stable synergistic herbicidal composition as claimed in any of
    the Claims 1 to 10, wherein the defoamer is Rhodorsil 426-R.
  7. A chemically stable synergistic herbicidal composition substantially as herein described and illustrated with reference to the text and the examples.
  8. The main claims of Plaintiff’s Indian Patent No. 244551 are as under:
  9. A stable synergistic herbicidal composition, the composition comprising 5 to 10 per cent by weight of metsulfuron methyl, 70 to 80 per cent by weight of sulfosulfuron, 1 to 25 per cent w/w of inert fillers, 0.1 to 10 per cent w/w of a stabilizer, 0.1 to 1 per cent w/w of a defoamer, 0.1 to 5 per cent w/w of wetting and 0.10 per cent of dispersing and suspending agents.

2……..

  1. The herbicidal composition as claimed in claim 1, wherein the said stabilizer is hexamethylene tetramine.

 

  1. The herbicidal composition as claimed in claim I, wherein said defoamer is
    selected from tallow soap, silicon oil derivative or a mixture thereof.
  2. The herbicidal composition as claimed in claim 1, wherein said defoamer is
    Rhodorsil 426-R.
  3. A process for preparing the herbicidal composition as claimed in anyone of
    the above claims, said process comprising:

(a)  preparing a first mixture by pre-blending 5-10 per cent metsulfuron
methyl active content, 20-40 per cent of sulfosulfuron active content and
0.1-10 per cent of inert filler; milling said pre-blend and post-blending
the milled mixture to get said first mixture;

  • preparing a second mixture by pre-blending 30-60 per cent of
    sulfosulfuron active content, 0.1-10 per cent stabilizer, 0.01-15 per cent of
    inert filler, with 0.1-5 per cent wetting and 0.1 per cent dispersing and
    suspending agent; milling said pre-blend and post-blending the milled
    mixture to get said second mixture;
  • preparing a spray solution being 10-40 per cent w/w of the
    composition by mixing 1-10 parts defoamer(s) and 50-500 parts water;
  • charging completely said first mixture in a roto-granulator having a
    rotor and a pan, followed by mixing it with the help of the rotor for 4-6
    minutes;
  • spraying 20-60 per cent of said prepared spray solution, of step (c), to
    the mixture of step (d);
  • operating the roto-granulator such that the rotor’s movement and the
    pan’s movement are in a direction opposite to each other, to get
    agglomerates in size range of 75p-200u;

(g)   charging completely said second mixture in the roto-granulator of
step (f) and mixing said first and second mixtures by operating the
roto-granulator for 3-5 minutes such that the pan is rotated at a speed of
20-200 rpm and the rotor is at a speed of 500-3000 rpm, keeping movement
of the rotor and that of the pan in the same direction, for layering the
agglomerates;

(h) spraying the remaining quantity (40-80 per cent) of said prepared spray solution to the agglomerates of step (g), followed by mixing for another 10-15 minutes to get granules in size range of lOOu-lOOOu;

(i) drying the granules to step (h) to get granules containing moisture content less than 0.5 per cent;

(j) sieving the dried granules of step (i) to get 95-99 per cent w/w yield; and

(k) conditioning the resulting granules obtained in step (j), by passing the granules through an air chamber to get chemically stable synergistic herbicidal composition.

  1. The herbicidal composition as claimed in any of the Claims 1 to 9, the
    composition comprising metsulfuron methyl active content about 5 per cent
    by weight of composition, sulfosulfuron active content about 75 per cent by  weight of composition, 1 to 5 per cent w/w of inert fillers or a blend thereof, about 6.6 per cent w/w of a dispersant and about 0.2 per cent w/w of a defoamer.
  1. The herbicidal composition claimed in claim 11, wherein said dispersant
    is a blend of about 2.5 per cent of sodium naphthalene sulphate, about 0.1 per
    cent of lignosulfonate and about 4.0 per cent of potassium polycarboxylate.
  2. The herbicidal composition claimed in claim 11, wherein said filler is
    ammonium sulphate, precipitated silica or a mixture thereof.
  3. The herbicidal composition claimed in claim 11, wherein said defoamer is
    a blend of about 0.1 per cent of silicone defoamer and 0.1 per cent of tallow
    soap defoamer.
  4. The herbicidal composition claimed in claim 11, wherein said wetting
    agent is a blend of about 0.1 per cent sodium dialkyl naphthalene sulfonate
    and about 4.2 per cent of 3EO alkyl (Cp-Cn) ether sulfate.
  5. The herbicidal composition claimed in claim 11, wherein said suspending
    agent is a blend of about 1.7 per cent of ethylene oxide-propylene oxide and
    about 0.1 per cent of a-alkyl (C10-C16)-u- hydroxypoly (oxyethylene) mixture.
  6. As per the application of Defendant its product an insecticide sought to be registered under Section 9(3) of the Insecticides Act would have the composition as under:

Sulfosulfuron a.i.                                                                  75.00 per cent w/vv

Metsulfuron methyl a.i.                                                              05 per cent w/w

Dispersant:-                                                                                                per cent

(i) Sodium naphthalene sulfonated                            02.50 per cent w/w

(ii) Lifnosulfonate                                                          00.10 per cent w/w

(iii) Potassium carboxylate                                           04.00 per cent w/w

Defoamer-Tallow soap                                                         00.20 per cent w/w

Wetting agent:                                                                                            per cent

(i) Sodium dialkyl naphathalene sulfonated       00.10 per cent w/w

(ii) 3 EO alkyl (C12-C15) ether sulphate                   04.20 per cent w/w
Suspending aid-

Ethylene oxide-propylene oxide                                         01.70 per cent w/w

Alpha-alkyl (C10-C16) omega-Hydroxypoly                00.10 per cent w/w

(oxyethylene) mixture

Silicone defoamer Filler (precipitated silica)                   00.10 per cent w/w

Q.S. per cent                             :

Total: 100.00 per cent w/w

 

  1. In the written statement the Defendant admits that the Plaintiff has also got a
    certificate of registration of insecticides under Section 9(3) of the Insecticides Act for
    a herbicidal composition containing the following ingredients:
  • 75 per cent by weight of sulfosulfuron a.i.
  • 5 per cent by weight of metsulfuron methyl
  • Dispersant comprising:

(i) 2.5 per cent by weight of sodium naphthalene sulfonate

(ii) 0.1 per cent by weight of lignosulfonate

(iii) 4 per cent by weight of potassium polycarboxylate

  • 2 per cent by weight of tallow soap defoamer
  • Wetting agent comprising:

(i) 0.1 per cent by weight sodium dialkyl naphthalene sulfonate (ii) 4.2 per cent by weight of 3EO alkyl (C12-C15) ether sulfate

(f)  1.7 per cent by weight of a suspending aid: ethylene oxide-propylene oxide;

(g)  0.1 per cent by weight of Alpha-alkyl (C10-C16) omega hydroxylpoly
(oxyethylene) mixture

(h) 0.1 per cent by weight of silicone defoamer (i) q.s. of filler (precipitated silica).

  1. Thus, the composition of products for registration of the herbicidal composition
    of the Plaintiff and Defendant are same.
  2. As noted above, the claims of the Plaintiff’s suit patents comprise of 5-10 per cent
    metsulfuron methyl and the Defendants 5 per cent weight of metsulfuron methyl.
    Plaintiff’s suit patents claims 70-80 per cent by weight of sulfosulfuron and the
    Defendant’s product registration consists of 75 per cent weight of sulfofulfuron.
    The Q.S. filler (precipitated silica) is also noted in the Plaintiff’s claim
    ! per cent weight of silicon defoarmer. The claim of the Defendant is that its
    product contains polyoxyethyline Sorbitan, which is also there in the Plaintiff’s
    suit patent IN 551, the fatty acid ester which is missing in the Defendant’s product
    is also missing in the Plaintiff’s suit patent IN 551.
  3. Thus even as per the Defendant the only difference between the Plaintiff’s
    and Defendant’s product is absence of a stabilizer which cannot be an essential
    A comparison of the claim of the Plaintiff’s suit patent and the
    Defendant’s product reveal that prima facie the Defendant’s product registration
    relates to the suit patent of the Plaintiff. It is not the case of the Plaintiff and the
    Defendant that the composition is not a stable compound and an addition of.l to
    10 per cent weight of the stabilizer being added further would not make the
    compound as a different compound not infringing the Patent of the Plaintiff, as
    all the essential ingredients with their requisite composition and percentage are
    the same.

 

  1. This Court is now required to deal with the other arguments advanced by learned
    Counsel for the Defendant that the suit patents are liable to be revoked in terms of
    the defence taken by the Defendants as per Section 107 of the Patents Act. Section
    107 of the Patents Act reads as under:

107 Defences etc. in suits for infringement.-

  • In any suit for infringement of a Patent every ground on which it may
    be revoked under Section 64 shall be available as a ground for defence.
  • In any suit for infringement of a Patent by the making using or
    importation of any machine, apparatus of other article or by the using of
    any process or by the importation, use or distribution or any medicine or
    drug, it shall be a ground for defence that such making, using, importation
    or distribution is in accordance with any one or more of the conditions
    specified in Section 47.

[107A. Certain acts not to be considered as infringement. -For the purposes of this Act,-

  • any act of making, constructing, [using selling or importing] a
    patented invention solely for uses reasonably related to the
    development and submission of information required under any
    law for the time being in force, in India, or in a country other than
    India, that regulates the manufacture, construction, [use, sale or
    import] of any product;
  • importation of patented products by any person from a person
    [who is duly authorised under the law to produce and sell or
    distribute the product], shall not be considered as a infringement of
    Patent Rights.] “
  1. Thus even in the absence of a counter claim the Defendant can seek revocation
    of the suit patents. The main ground on which the Defendant seeks revocation of
    the suit patent of the Plaintiff is the study by Dr. C.P. Singh. The search paper of
    Dr. C.P. Singh titled as ‘Effect of Sulfosulfuron alone and its combination
    with Metsulfuron on wheat and Associated weeds, winter 2001-2002’ reads as
    under:
  • Metsulfuron methyl 20 WP @ 2 gm a.i. ha1 with surfactant and 4 gm
    i. ha^1 without surfactant is found effective for the control of only broad
    leaved weeds.
  • Combination of sulfosulfuron + Metsulfuron @ 25gm + 2 gm, and 25 gm + 4
    gm a.i. ha”1 did not improve the weed control efficiency over solo sulfosulfuron
    @ 25 gm a.i. ha”1.
  • Sulfosulfuron @ 25gm a.i. ha”1 at 35 days after sowing (DAS) followed by
    Metsulfuron @ 4 gm a.i. ha”1 at 45 DAS gave the broad spectrum control of both
    Phalaris minor and complex of broad leaved weeds and resulted in the
    maximum yield of wheat 4938 kg ha”1.

 

RESULTS AND DISCUSSION

Table I: Effect of Sulfosulfuron alone and its combination with Metsulfuron on wheat and Associated weeds, winter 2001-2002.

Treatment                          Number of weeds rrT2 (mean of.5 on farm trials)                         Yield (kg ha”1)

Grasses                       Broad leaved weeds

P           C        M          M          M         R        Others

minor     album    alba      indica      denti-    aceto-

culate     sella

Sulfosulfuron 75 WG@                6113453                4805

25g a.i.ha • at 35 DAS

Metsulfuron me thy 120             240          01            1           002                3575

WP @ 2 gm a.i.ha ‘ + 500 gm Surfactant at 45 DAS

Metsulfuron methyl                   221           1         1           0           112                3560

20 WP @ 4 gm a.i.ha-1 (without Surfactant) at 45 DAS

Sulfosulfuron 75                         2           000            102               4938

WG © 25 gm at 35 DAS Followed by Metsulfuron Methyl 20 WP @ 4 gm a.i.ha-1 at 45 DAS

Sulfosulfuron 75 WG ©              10           0          11            013                4768

25 gm a.i.ha J + Metsulfuron methyl 20 WP & 2 gm a.i’ha ‘ at 45 DAS

Sulfosulfuron 75                        11            0         1           1           11           3                4782

WG @ 25 gm a.i.ha-1 + Metsulfuron methyl 20 WP @ 4 gm a.i.ha ‘ at 35 DAS

Untreated control                       298         21         11        14          17          7          11                1618

Sulfosulfuron when used sequentially with metsulfuron offers maximum grain yield followed by Sulfosulfuron solo, Sulfosulfuron mixed with metsulfuron and metsulfuron solo.

  1. Thus the finding of C.P. Singh is that a combination of Sulfosulfuron and
    metsulfuron is not effective and Sulfosulfuron when used sequentially with
    metsulfuron offers maximum grain yield followed by Sulfosulfuron solo, Sulfosulfuron
    mixed with metsulfuron and metsulfuron solo.
  2. In US 301 the claim was metsulfuron and Sulfosulfuron mixed with other
    compounds with no fixed percentage and were not combinations of metsulfuron
    Sulfosulfuron only. Thus US 301 cannot be said to be a prior teaching to the
    Plaintiff’s product. US 301 which the Defendant claims is a prior art claimed:

D3 discloses, in particular, combinations of the sulfony-lurea of the formula 3 with fenoxaprop, fenoxaprop-P, isoproturon, diclofop, clodinafop, mixtures of

 

clodinafop and cloquintocet, chlortoluron, methabenzthiazuron, imazamethabenz, tralkoxydim, difenzoquat, flamprop, flamprop-M, pendimethalin, nicosulfuron, rimsulfuron, primisulfuron, mecoprop, mecoprop-P, MCPA, dichlorprop, dichlorprop-P, 2,4-D, dicamba, fluroxypyr, ioxynil, bromoxynil, bifenox, fluroglycofen, acifluorfen, lactofen, fomesafen, oxyfluorfen, ET-751, azoles according to WO/08999, diffufenican, bentazon, metolachlor, metribuzin, atrazin, terbuthylazin, alachlor, acetochlor, dimethenamid, amidosulfuron, metsulfuron, tribenuron, thifensulfuron, triasulfuron, chlorsulfuron, prosulfuron or CGA-152005, sulfonylureas according to WO 94/10154, flupyrsulfurcm (DPX-KE459), sulfosulfuron (MON37500), KIH-2023, glufosinate, glufosinate-P or glyphosate,

In particular, combination with fenoxaprop, fenoxaprop-P, isoproturon, diclofop, clodinafop, mixtures of clodinafop and cloquintocet, chlortoluron, methabenzthiazuron, imazemethabenz, tralkoxydim, difenzoquat, flamprop, flamprop-M, pendimethalin, mecoprop, mecoprop-P, MCPA, dichlorprop, dichlorprop-P, 2,4-D, dicamba, fluroxypyr, ioxynil, bromoxynil, bifenox, fluoroglycofen, lactofen, fomesafen, oxyfluorfen, ET-751, azoles according to WO 94/08999, F 8426, diflufenican, bentazon, metribuzin, metosulam, flupoxam, prosulfocarb, flurtamone, amidosulfuron, metsulfuron tribenuron, thifensulfuron, triasulfuron, chlorsulfuron, sulfonylureas according to WO 94/10154, sulfonylureas according to WO 92/13845, flupyrsulfuron (DPX-KE459), MON 48500, sulfusulfuron (MON37500), glufosinate, glufosinate-P or glyphosate are known.

  1. This Court in F. Hoffmann-La Roche Ltd. (supra) held that whether an invention involves ‘novelty’ and an ‘inventive step’ or is ‘obvious’ is a mixed question of law and fact, depending on the facts and circumstances of each case and laid down the

broad criteria to ascertain the same as under:

 

  1. From the decisions noted above to determine obviousness/lack of inventive steps the following inquires are required to be conducted:

Step No. 1 To identify an ordinary person skilled in the art,

Step No. 2 To identify the inventive concept embodied in the Patent,

Step No. 3 To impute to a normal skilled but unimaginative ordinary person skilled in the art what was common general knowledge in the art at the priority date.

Step No. 4 To identify the differences, if any, between the matter cited and the alleged invention and ascertain whether the differences are ordinary application of law or involve various different steps requiring multiple, theoretical and practical applications,

Step No. 5 To decide whether those differences, viewed in the knowledge of alleged invention, constituted steps which would have been obvious to the ordinary person skilled in the art and rule out a hideside approach.

 

  1. No doubt Dr. C.P. Singh’s research paper was a prior art, however the findings of
    the same were contrary to the product of the Plaintiff and the study of Dr. C.P. Singh
    being contra indicative to the product of the Plaintiff cannot be used to come to the
    conclusion that the invention of the Plaintiff was obvious and not a novelty. The
    differences between the claim in the US 301 and the suit patents are too many and
    US 301 nowhere suggests a combination as prepared by the Plaintiff’s product and
    cannot be thus treated as a prior art to reject the claim of the Plaintiff as not novel or
  2. Defendants claim that the Plaintiff is not entitled to an interim injunction for
    concealment of facts and material variations deserves to be rejected for the reason
    even if there has been amendment in the plaint, this Court has to construct the claim
    on the basis of what is claimed in the patent documents, as has been noted above.
    Further the Insecticides Registration Committee has no jurisdiction to decide on
    Patent registration as held in the decision reported as Shogun Organics Ltd. v. Union
    of India (2013) SCC Online Ker 22792. Finding by the Insecticides Registration
    Committee being finding of a body which has no effect on the validity of the Patent,
    mere non-disclosure of the finding of the Insecticides Board prinia facie cannot be
    held to be material suppression of facts and injunction refused on the said count.
    The Defendant having not been able to demonstrate invalidity of the suit patents
    and a pre-grant opposition to the Patent of the Plaintiff already having been
    dismissed by the Appellate Board and in writ petition settlement arrived at with
    Gharda Chemicals, the Plaintiff has made out a strong prima facie case in its favour.
    [See National Development Corporation Delhi Cloth and General Mills Co. Ltd. (1979)
    SCC Online Del 206.] The Defendant was not to launch its product till
    19″‘ November, 2017 and thus even if it has launched now during the interregnum,
    no loss or irreparable harm would be caused in directing the Defendant to not
    launch the product pending decision in the suit, as held in the decision reported as
    Bristol-Myers Squib Co. and Ors. v. ].D. joshi and Am. 2015 (64) PTC 135. The balance of
    convenience also lies in favour of the Plaintiff.
  3. Consequently, the Defendant, its directors, employees, officers, servants, agents
    are restrained from making, selling, distributing, advertising, importing, offering for
    sale, and in any other manner, directly or indirectly, commercializing or dealing in
    any product that infringes the Plaintiff’s registered Patents, as prayed for in the
  4. IA 9585/2017 is disposed of.

Add a Comment

Your email address will not be published. Required fields are marked *