Novartis AGLichtstrasse 35 & Anr. v. Venkata Narayana Active Ingredients Pvt LtdVenkata Narayana Towers
Case at a glance
Provisions considered
- Patents Act, 1970 ss. 3(d), 107
Key paragraphs
- Para 55. Since parties agreed that there are typographical errors in certain issues, without doubt, those typographical errors are liable to be corrected. As regards the date of expiry of the suit patent, in view of the express assertion by the defendant that the suit patent…
Judgment
A.No.5555 of 2024in C.S.No.282 of 2018IN THE HIGH COURT OF JUDICATURE AT MADRASDATED: 05.02.2025CORAM:THE HONOURABLE MR. JUSTICE SENTHILKUMAR RAMAMOORTHYA.No.5555 of 2024in C.S.No.282 of 2018 Novartis AGLichtstrasse 35, 4056, Basel, Switzerland, Rep.by its Power of Attorney holder, Mr.Atul Bade and another .. ApplicantsVs.Venkata Narayana Active Ingredients Pvt LtdVenkata Narayana Towers, III Floor, New No.60, Old No.35, Venkata Narayana Road, T. Nagar, Chennai 17( Amended as per order dated 23.11.2018 in Appln. No.8946/2018 and time Extended as per order dated 22/04/2019).. RespondentFor Applicants: Mr.Hemanth SinghMs.Mamta Jhafor Mr.Arun C.MohanFor Respondent: Mr.T.K.RamkumarMs.Sumitha Vibhu1/7 https://www.mhc.tn.gov.in/judis A.No.5555 of 2024in C.S.No.282 of 2018
O R D E RThe suit was filed seeking remedies in respect of alleged infringement of suit patent No.212815 by the defendant. Issues were framed on 19.01.2024. By this application, the plaintiffs seek amendment or recasting of issues.
Learned counsel for the plaintiffs seeks such recasting on three grounds. The first ground is on the basis of typographical errors in the issues, as originally framed. The second ground is that the onus has been placed on the plaintiffs even with regard to issues wherein the onus should lie on the defendant. The last ground is that issue (c) is repetitive and may be deleted.
By referring to the affidavit in support of the application, learned counsel submits that the proposed amendments have been set out in paragraph 6 thereof.
In response, learned counsel for the defendant submits that the issues may be amended with regard to the correction of typographical errors, such as the use of the erroneous abbreviation “APA” in issues (b) 2/7 https://www.mhc.tn.gov.in/judis A.No.5555 of 2024in C.S.No.282 of 2018and (c) instead of API and the use of the erroneous expression “metabolize” in issue (j) instead of “metabolite”. As regards the date “09.12.2018” in issue (b), learned counsel submits that the defendant has taken the express stand in the written statement that the date of expiry of the suit patent is 09.12.2018. With regard to the onus, learned counsel submits that it is for the Court to decide on whom onus lies.
Since parties agreed that there are typographical errors in certain issues, without doubt, those typographical errors are liable to be corrected. As regards the date of expiry of the suit patent, in view of the express assertion by the defendant that the suit patent expired on 09.12.2018 and the denial thereof by the plaintiffs, it is appropriate that an issue be framed separately with regard to expiry of the suit patent. As regards issues relating to the validity of the suit patent or the defence raised by relying on Section 107 of the Patents Act, 1970, as contended by learned counsel for the plaintiffs, the onus is on the defendant. Therefore, the issues are required to be recast to reflect the same. Original issue (c) requires modification by changing APA to API and by deleting the words “for scientific, research and development” therefrom.3/7 https://www.mhc.tn.gov.in/judis A.No.5555 of 2024in C.S.No.282 of 20186.It is also appropriate to indicate the party on whom the onus probandi falls by specifying OPP or OPD, as the case may be.
7. Accordingly, in substitution of issues framed on 19.01.2024, the issues are recast as under: “(a) Is the suit infructuous consequent to expiry of the plaintiffs Patent No.212815? (OPD)(b) Whether the suit patent expired on 09.12.2018, as contended by the defendant, or on 09.12.2019, as contended by the plaintiffs. (OPD & OPP)(c) Whether the supply of Vildagliptin in API form by the defendant to Egyptian importers was only for scientific research and development purposes as declared by the importers, anticipating the expiry of plaintiffs patent No.212815, as per Section 107-A of the Patents Act or was it for commercial purposes? (OPD)(d) Whether the supplying of Vildagliptin in API form by the defendant violates the undertaking given by the defendant in earlier proceedings? (OPP)(e) Whether the defendant is in violation of the judgment and 4/7 https://www.mhc.tn.gov.in/judis A.No.5555 of 2024in C.S.No.282 of 2018decree dated 31.07.2015 passed by this Court in the suit C.S.No.329 of 2015?
(OPP)(f) Whether the defendant is estopped from raising the plea of invalidity of the suit patent IN 212815 by way of defence under Section 107 of the Patents Act, 1970 in view of the decree dated 31.07.2015 passed on the basis of admission in undertaking dated 28.07.2015 furnished before this Court in the suit C.S.No.329 of 2015? (OPP)(g) Whether the manufacture, stockpiling and export of Vildagliptin by the defendant amounts to infringement of the suit patent IN 212815? (OPP)(h) Whether the manufacture and export of Vildagliptin by the defendant falls within the exceptions under Section 107-A of the Patents Act, 1970? (OPD)(i) Was the quantity of Vildagliptin in API form supplied to the Egyptian Importers essential for normal clinical trials for each variation of Vildagliptin or was it excessive? (OPD)(j) Was the plaintiffs' patent No.212815 invalid on account of misrepresentation and lack of disclosure to the patent office under Section 8 of the Patents Act?
(OPD)5/7 https://www.mhc.tn.gov.in/judis A.No.5555 of 2024in C.S.No.282 of 2018(k) Is Vildagliptin a metabolite and therefore not patentable under Section 3(d) of the Patents Act 1970? (OPD)(l) Whether the plaintiffs are entitled to damages and in the alternative, rendition of account, as prayed for? (OPP)(m) To what other reliefs?” 05.02.2025 kj(2/3)6/7 https://www.mhc.tn.gov.in/judis A.No.5555 of 2024in C.S.No.282 of 2018SENTHILKUMAR RAMAMOORTHY,J.kjA.No.5555 of 2024in C.S.No.282 of 201805.02.2025(2/3)7/7
Precedent status how later indexed judgments have treated this case
No known negative treatment found in the Courts & Cases corpus.
This is a result about the indexed corpus, not a finding that the judgment remains good law. Coverage may be incomplete.