Mr. Hemant Singh, Ms. Mamta Rani and Jha, Mr. Siddhant Sharma Mr. Abhay Tandon v. CONTROLLER OF PATENTS AND DESIGNS & ANR

Through: Ms. Nidhi Raman, CGSC with Mr. Akash Mishra, Mr. Debasish Mishra and Mr. Arnav Mittal, Advocates for R-1. Mr. Dayan Krishnan, Sr. Advocate with Ms. Amrita Majumdar, Mr. Afzal B. and Mr. Sharad Besoya, Advocates for respondent No.2. W.P.(C)-IPD 19/2025, CM 78/2025 & CM 79/2025 NOVARTIS AG .....Petitioner Through: Mr. Hemant Singh, Ms. Mamta Rani Jha, Mr. Siddhant Sharma Mr. Abhay Tandon, Advocates. versus CONTROLLER OF PATENTS AND DESIGNS & ANR. .....Respondents Through: Ms. Nidhi Raman, CGSC with Mr. Akash Mishra, Mr. Debasish and Mr. Arnav Mittal, Mishra W.P.(C)-IPD 18/2025 & connected matters This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/04/2025 at 11:09:27 Advocates for R-1. Ms. Rajeshwari H., Mr. Praveen Singh and Ms. Durgesh Nandini, Advocates for R-2. W.P.(C)-IPD 20/2025, CM 80/2025 & CM 81/2025 NOVARTIS AG .....Petitioner Through: Mr. Hemant Singh, Ms. Mamta Rani Jha, Mr. Siddhant Sharma Mr. Abhay Tandon, Advocates. versus CONTROLLER OF PATENTS AND DESIGNS & ANR. .....Respondents Through: Ms. Nidhi Raman, CGSC with Mr. Akash Mishra, Mr. Debasish Mishra and Mr. Arnav Mittal, Advocates for R-1. Mr. Manish Aryan, Ms. Mamisha Singh, Sharma Mr. Nishant Rai and Mr. Abhai Pandey, Advocates for R-2. Varun Mr. CORAM: HON'BLE MR. JUSTICE AMIT BANSAL O R D E R 21.04.2025 The present petitions have been filed seeking quashing of the common

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1. impugned order dated 17th March, 2025, passed by respondent no.1/Joint Controller of Patents and Designs, Patent Office Delhi, in post-grant opposition proceedings against Indian patent no. 414518.

2. The petitioner has also challenged the recommendation of W.P.(C)-IPD 18/2025 & connected matters This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/04/2025 at 11:09:27 Opposition Board which was given on the same date i.e., 17th March, 2025, recommending revocation of the patent granted in favour of the petitioner.

3. Mr. Hemant Singh, counsel appearing on behalf of the petitioner submits that the order passed by the Joint Controller is not in conformity with the directions passed by the Co-ordinate Bench of this Court Pharmacyclics LLC vs. Union of India, 2019:DHC:6183 as the evidence submitted by the private respondents under Rules 59 and 60 of the Patent Rules, 2003 have been allowed. Having permitted the private respondents to place on record their evidence, the petitioner should have been given an opportunity to file rebuttal evidence. Therefore, the impugned order is in violation of principles of natural justice.

4. He further submits that while giving the recommendation, Opposition Board has placed reliance on evidence filed by private respondents. It is submitted that the aforesaid recommendation has been given without the petitioner having been given an opportunity to file its rebuttal evidence.

5. He therefore submits that the recommendation of the Opposition Board be set aside and the matter be placed before a newly constituted Opposition Board.

6. Without prejudice to their rights and contentions, counsel for private respondents submit that they would not have any objection if the petitioner is given an opportunity to file its evidence in rebuttal.

7. Vide the order dated 3rd April, 2025, this Court directed the counsel for the respondents to take instructions. The relevant portion of the said order is set out below- “11. The counsel appearing on behalf of the respondents shall W.P.(C)-IPD 18/2025 & connected matters This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/04/2025 at 11:09:27 take instructions before the next date of hearing with regard to the following:- i. The petitioner being permitted to file rebuttal evidence before the Joint Controller and consequent recommendation given by the Opposition Board being set aside. thereto, ii. The opposition proceedings being considered afresh by different Joint Controller. iii. A fresh Opposition Board being appointed to consider the matter.

12. In addition, Ms. Raman will take instructions with regard to the proposed time frame in which a fresh Opposition Board, if ordered to be constituted by the respondent no.1, would be in a position to give its recommendation.”

8. Pursuant to the aforesaid order, Ms. Nidhi Raman, CGSC has returned with instructions in respect of the issues raised in the said order. She submits that a new Joint Controller has been designated to hear the post-grant opposition proceedings in the present case. She strongly opposes the appointment of a fresh Opposition Board.

9. Having heard the counsel for the parties, I am of the view that the present writ petitions can be disposed of by giving the following directions:- i. In view of the fact the impugned order of the Joint Controller 17th March, 2025 as well recommendation made by the Opposition Board were made without the petitioner being given an opportunity to file rebuttal evidence, the same are set aside. ii. The petitioner is given an opportunity to file its evidence in W.P.(C)-IPD 18/2025 & connected matters This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/04/2025 at 11:09:27 rebuttal to the evidence filed on behalf of the opponent/private respondents under Rule 59 and Rule 60. The same shall be filed within eight weeks from today. iii. After the evidence in rebuttal has been filed on behalf of the petitioner, the same shall be placed before the Opposition Board for their consideration. Based on the material placed before them, the Opposition Board shall make a fresh recommendation within four weeks thereafter. iv. After receiving the recommendation, the Deputy Controller shall issue a fresh hearing notice to the parties and conduct a hearing. v. The Controller shall decide all the post-grant oppositions in an expeditious manner.

10. The Registry is directed to send a copy of the present order to the office of the Controller General of Patents, Designs and Trade Marks at the e-mail [email protected] for compliance.

11. It is made clear that the aforesaid order has been passed in the peculiar facts and circumstances of the present case and will not be treated as a precedent. Further, no observations have been made with regard to the merits of the matter. APRIL 21, 2025 Vivek/- AMIT BANSAL, J W.P.(C)-IPD 18/2025 & connected matters This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/04/2025 at 11:09:27

Through: Ms. Nidhi Raman, CGSC with Mr. Akash Mishra, Mr. Debasish Mishra and Mr. Arnav Mittal, Advocates for R-1. Mr. Dayan Krishnan, Sr. Advocate with Ms. Amrita Majumdar, Mr. Afzal B. and Mr. Sharad Besoya, Advocates for respondent No.2. W.P.(C)-IPD 19/2025, CM 78/2025 & CM 79/2025 NOVARTIS AG .....Petitioner Through: Mr. Hemant Singh, Ms. Mamta Rani Jha, Mr. Siddhant Sharma Mr. Abhay Tandon, Advocates. versus CONTROLLER OF PATENTS AND DESIGNS & ANR. .....Respondents Through: Ms. Nidhi Raman, CGSC with Mr. Akash Mishra, Mr. Debasish and Mr. Arnav Mittal, Mishra W.P.(C)-IPD 18/2025 & connected matters This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/04/2025 at 11:09:27 Advocates for R-1. Ms. Rajeshwari H., Mr. Praveen Singh and Ms. Durgesh Nandini, Advocates for R-2. W.P.(C)-IPD 20/2025, CM 80/2025 & CM 81/2025 NOVARTIS AG .....Petitioner Through: Mr. Hemant Singh, Ms. Mamta Rani Jha, Mr. Siddhant Sharma Mr. Abhay Tandon, Advocates. versus CONTROLLER OF PATENTS AND DESIGNS & ANR. .....Respondents Through: Ms. Nidhi Raman, CGSC with Mr. Akash Mishra, Mr. Debasish Mishra and Mr. Arnav Mittal, Advocates for R-1. Mr. Manish Aryan, Ms. Mamisha Singh, Sharma Mr. Nishant Rai and Mr. Abhai Pandey, Advocates for R-2. Varun Mr. CORAM: HON'BLE MR. JUSTICE AMIT BANSAL O R D E R 21.04.2025 The present petitions have been filed seeking quashing of the common

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1. impugned order dated 17th March, 2025, passed by respondent no.1/Joint Controller of Patents and Designs, Patent Office Delhi, in post-grant opposition proceedings against Indian patent no. 414518.

2. The petitioner has also challenged the recommendation of W.P.(C)-IPD 18/2025 & connected matters This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/04/2025 at 11:09:27 Opposition Board which was given on the same date i.e., 17th March, 2025, recommending revocation of the patent granted in favour of the petitioner.

3. Mr. Hemant Singh, counsel appearing on behalf of the petitioner submits that the order passed by the Joint Controller is not in conformity with the directions passed by the Co-ordinate Bench of this Court Pharmacyclics LLC vs. Union of India, 2019:DHC:6183 as the evidence submitted by the private respondents under Rules 59 and 60 of the Patent Rules, 2003 have been allowed. Having permitted the private respondents to place on record their evidence, the petitioner should have been given an opportunity to file rebuttal evidence. Therefore, the impugned order is in violation of principles of natural justice.

4. He further submits that while giving the recommendation, Opposition Board has placed reliance on evidence filed by private respondents. It is submitted that the aforesaid recommendation has been given without the petitioner having been given an opportunity to file its rebuttal evidence.

5. He therefore submits that the recommendation of the Opposition Board be set aside and the matter be placed before a newly constituted Opposition Board.

6. Without prejudice to their rights and contentions, counsel for private respondents submit that they would not have any objection if the petitioner is given an opportunity to file its evidence in rebuttal.

7. Vide the order dated 3rd April, 2025, this Court directed the counsel for the respondents to take instructions. The relevant portion of the said order is set out below- “11. The counsel appearing on behalf of the respondents shall W.P.(C)-IPD 18/2025 & connected matters This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/04/2025 at 11:09:27 take instructions before the next date of hearing with regard to the following:- i. The petitioner being permitted to file rebuttal evidence before the Joint Controller and consequent recommendation given by the Opposition Board being set aside. thereto, ii. The opposition proceedings being considered afresh by different Joint Controller. iii. A fresh Opposition Board being appointed to consider the matter.

12. In addition, Ms. Raman will take instructions with regard to the proposed time frame in which a fresh Opposition Board, if ordered to be constituted by the respondent no.1, would be in a position to give its recommendation.”

8. Pursuant to the aforesaid order, Ms. Nidhi Raman, CGSC has returned with instructions in respect of the issues raised in the said order. She submits that a new Joint Controller has been designated to hear the post-grant opposition proceedings in the present case. She strongly opposes the appointment of a fresh Opposition Board.

9. Having heard the counsel for the parties, I am of the view that the present writ petitions can be disposed of by giving the following directions:- i. In view of the fact the impugned order of the Joint Controller 17th March, 2025 as well recommendation made by the Opposition Board were made without the petitioner being given an opportunity to file rebuttal evidence, the same are set aside. ii. The petitioner is given an opportunity to file its evidence in W.P.(C)-IPD 18/2025 & connected matters This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/04/2025 at 11:09:27 rebuttal to the evidence filed on behalf of the opponent/private respondents under Rule 59 and Rule 60. The same shall be filed within eight weeks from today. iii. After the evidence in rebuttal has been filed on behalf of the petitioner, the same shall be placed before the Opposition Board for their consideration. Based on the material placed before them, the Opposition Board shall make a fresh recommendation within four weeks thereafter. iv. After receiving the recommendation, the Deputy Controller shall issue a fresh hearing notice to the parties and conduct a hearing. v. The Controller shall decide all the post-grant oppositions in an expeditious manner.

10. The Registry is directed to send a copy of the present order to the office of the Controller General of Patents, Designs and Trade Marks at the e-mail [email protected] for compliance.

11. It is made clear that the aforesaid order has been passed in the peculiar facts and circumstances of the present case and will not be treated as a precedent. Further, no observations have been made with regard to the merits of the matter. APRIL 21, 2025 Vivek/- AMIT BANSAL, J W.P.(C)-IPD 18/2025 & connected matters This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/04/2025 at 11:09:27