Relief Of Ad Interim Injunction In Patent Cases Not Possible Without ‘Claim Mapping’: Delhi High Court

The Delhi High Court in a patent case, elucidated that the relief of an ad interim injunction is not possible without there being any ‘claim mapping’.

The Court elucidated thus in a suit filed for seeking permanent injunction of patents infringement.

A Single Bench of Justice Saurabh Banerjee observed, “Being the patentee of both the suit patents IN ‘646 and IN ‘632, the plaintiffs are the rightful owners to institute the present suit for infringement of the said patents against the defendant as also seek appropriate reliefs for grant of an ad interim injunction qua them against the defendant as well, however, in view of the afore going analysis and reasonings specifically with regards to ‘claim mapping’ as also the fact that there were no reference and/ or arguments advanced by either of the parties, particularly by the learned senior counsel for the plaintiffs, the relief of an ad interim injunction is not possible without there being any ‘claim mapping’.”

The Bench further emphasised that, granting an injunction merely on the basis of a registered patent to a patentee without putting it to the test of ‘claim mapping’ or like, cannot be the intention of the legislature.

Senior Advocates Sandeep Sethi and Arvind Nigam represented the plaintiffs while Senior Advocate Dushyant Dave represented the defendant.

In this case, the plaintiffs sought direction against the defendant company, its employees, agents, distributors, licensees, etc. to recall all of the stocks of the product ‘Sigrima’ and/or any similar biologic/biosimilar of Pertuzumab, infringing the claims of IN 268632 and IN 4646464, from the market. They also sought to restrain the defendant and others from releasing any stocks of the said product. The High Court had passed an order of injunction earlier. The plaintiff company was founded in 1896 under the laws of Switzerland and being in the business of pharmaceuticals and diagnostics, it was involved in the discovery, development, production, and marketing of novel healthcare solutions for over 120 years.

The plaintiffs’ group of companies has presence in over 100 countries and employs over one million people worldwide and has invested CHF 13,237 in research and development in 2023. The plaintiffs instituted a suit pertaining to its Indian Patent No.IN 464646 titled as “PERTUZUMAB VARIANTS AND EVALUATION THEREOF” which relates to the method for making a composition comprising Pertuzumab, which is a monoclonal antibody (MAb) biologic and is the first of its class in a line of agents called “HER Dimerization Inhibitors”.

The High Court in the above regard, noted, “Without any ‘claim mapping’ there is no basis for this Court to render any finding and/ or draw any final conclusion against the defendant. As such, without commenting on the merits involved, even though the plaintiffs may have set out a good case based on the conduct/s of the defendant as recorded in the order dated 09.07.2024, however, since there is no ‘claim mapping’ qua the two patents IN ‘646 and IN ‘632 of the plaintiffs with the impugned product ‘Sigrima’ of the defendant, this Court is unable to pass any order in favour of the plaintiffs merely because the composition comprising Pertuzumab is same or they are biosimilar.”

The Court said that it is too bold for it to grant an order of ad interim injunction on the basis of probabilities and hence, allowing the application of the plaintiffs would amount to an ad-interim injunction to them simply because they have two suit patents IN ‘646 and IN ‘632 subsisting in their names.

“The same shall render the purpose of the existence of the provisions of the Patent Act, 1970 otiose. … Holistically, the issue qua conduct of the defendant is hardly of any significance since it is the plaintiffs, who have been unable to demonstrate anything qua ‘claim mapping’ or like. Since the plaintiffs’ have not averred/ referred/ argued anything qua ‘claim mapping’ or like, in the present application under Order XXXIX rules 1 and 2 CPC which is an integral part for consideration of grant of an ad interim injunction in favour of the plaintiffs and against the defendant in the present suit for infringement of suit patents IN ‘646 and IN ‘632”, it added.

Moreover, the Court remarked that, even otherwise, it is highly improbable for it to conclude anything merely on the basis of the SEC Meeting held or what was stated to the SEC by the defendant or otherwise that the defendant is actually infringing the suit patents, IN ‘646 and IN ‘632 of the plaintiffs, and that too, at this stage.

“… this Court is refraining to go into the aspect of alleged breach of assurance given by the defendant or that it did not inform this Court about the launch or that it allegedly over-reached this Court or that the plaintiffs have suffered damages as well”, it said.

The Court also observed that the principles of natural justice demand the defendant to act judicially and with utmost care, prevention and precaution, more so, whence admittedly the defendant is not a fly by night operator and it claims to be one of the pioneer entities.

“The defendant is well aware of the far-reaching impact when it is involved in proceedings pending adjudication before a Court of law and when the actions of the defendant have a corollary effect on the outcome/ decision thereof”, it further noted.

The Court, therefore, concluded that the grant of relief of an ad interim injunction is of a discretionary nature, for grant of which the party like the plaintiffs have to satisfy a Court of law by setting out that it has a prima-facie case in their favour with the balance of convenience also in their favour and that they are likely to suffer irreparable loss and injury as well as ‘claim mapping’ or like in a suit of patent infringement of the present nature, the plaintiffs have been unable to make out any case in their favour and against the defendants in the absence thereof.

Accordingly, the High Court dismissed the application and refused to grant reliefs to the plaintiffs.

Cause Title- F- Hoffmann -La Roche AG & Anr. v. Zydus Lifesciences Limited (Neutral Citation: 2024:DHC:7868)

Appearance:

Plaintiffs: Senior Advocates Sandeep Sethi, Arvind Nigam, Advocates Pravin Anand, Shrawan Chopra, Archana Shankar, Devinder Rawat, Prachi Agarwal, Achyut Tewari, N. Mahavir, Riya Kumar, Shreya Sethi, and Agnish Aditya.

Defendant: Senior Advocate Dushyant Dave, Advocates Bitika Sharma, Aadarsh Ramanujan, Vrinda Pathak, Sandhya Kukreti, Rajnish Kumar, Vanshika Puri, Ahaana Singh Rana, Rupali Bandopadhya, and Abhijeet Kumar.

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