In the present case, the Learned Single Judge of the High Court of Delhi has recently passed an order holding that the discretionary reliefs provided under Sections 34 and 38 of the Specific Relief Act 1963 are not applicable in patent disputes. The Court also admonished the Defendant for its conduct in seeking reliefs outside the Patents Act 1970 by resorting to clever drafting.

In June 2019, Natco Pharma (Defendant) filed a suit under Section 34 of the Specific Relief Act before the City Civil Court, Hyderabad, against Bristol-Myers Squibb Company USA inter alia seeking a declaration that APIXABAN is covered by a written description of the registered patent bearing IN243917(senior patent), but not claimed in the claims, and is therefore in the public domain and that the Defendant is entitled to use APIXABAN and Bristol-Myers Squibb Company USA should be injuncted from hampering and threatening the business of the Defendant with regard to APIXABAN.

In July 2019, Bristol-Myers Squibb Holdings Ireland Unlimited Company and its sister concerns (Plaintiffs) filed the Delhi Suit against the Defendant claiming infringement of their registered patent bearing IN247381 (junior patent) valid till 17th September 2022 having APIXABAN. In the Delhi Suit, the Plaintiffs duly disclosed before the Court that they were also the owner of the senior patent valid till 17th December 2019 which was permitted with a Markush claim encompassing trillions of compounds inter alia also generically covering APIXABAN. The Plaintiffs believed that the manufacture of APIXABAN by the Defendant also infringed the senior patent, and reserved rights to sue the Defendant with regard to the same.

In the Delhi Suit, the Defendant filed an application under Section 10 of the Code of Civil Procedure 1908 (CPC) seeking a stay on the ground of pendency of the prior instituted Hyderabad Suit. The Defendant contended that both in the Delhi Suit and Hyderabad Suit, there was a common issue for determination i.e. the scope and contents of disclosure of the junior patent and the senior patent, and therefore, the Delhi Suit being later in time, ought to have stayed.

The Plaintiffs disagreed with the application and inter alia contended that the matter in issue in the Delhi Suit and Hyderabad Suit was different inasmuch as Hyderabad Suit was related to the senior patent and the Delhi Suit was related to the junior patent. The Plaintiffs further contended that the reliefs sought in the Hyderabad Suit were in the nature of declaratory reliefs of non-infringement of the senior patent and groundless threats qua the said senior patent, as provided under Sections 105 and 106 of the Patents Act respectively, which are completely different from the relief of infringement sought in the Delhi Suit.

Issue

The issue was whether the discretionary reliefs provided under Sections 34 and 38 of the Specific Relief Act 1963 are applicable in patent disputes or not?

Judgment

The Court observed that there is no common or inherent law right with regard to patents as it exists in respect of trademarks. The Court relied upon judicial precedents with regard to designs and copyrights, wherein it has been repeatedly held that there is no right outside the statute. The Court considered the non-obstante clause in Section 105 of the Patents Act which specifically excludes Section 34 of the Specific Relief Act and observed that the Patents Act is a special statute with regard to patents as compared to the Specific Relief Act which is a common statute. In accordance with the well-established legal maxim generalia specialibus non-derogant, the provisions of the Patents Act will prevail over the Specific Relief Act. In view of these, the Court held that the Defendant could not have sought a declaration of non-infringement under Section 34 of the Specific Relief Act, as the Patents Act is the sole repository of law relating to patents.

The Court further observed that the relief of declaration under Section 34 of the Specific Relief Act is discretionary in nature, and such discretion ought not to be exercised if any other efficacious remedy is available under law, which remedies are available under Sections 105 and 106 of the Patents Act.

The Court also observed that the Defendant in the Hyderabad Suit was effectually questioning the validity of the senior patent which cannot be adjudicated by a Civil Court under the scheme of the Patents Act. Furthermore, the Hyderabad Civil Court was not a competent court to grant reliefs sought in the Delhi Suit as well as the Hyderabad Suit, which is one of the compulsory pre-requisites for entertaining an application for stay of a subsequent suit under Section 10 of The Code of Civil Procedure (CPC). The Court reprimanded the Defendant for resorting to clever drafting of the plaint in the Hyderabad Suit in a bid to claim relief for which the Hyderabad Civil Court did not even have jurisdiction under the law.

In light of the above, the Court vide its Judgment dated 23rd January 2020, dismissed the application of the Defendant under Section 10 of The Code of Civil Procedure (CPC) for a stay of the Delhi Suit, and relegated the matter to trial.

In the judgment, the Court raised a very interesting question. The Court observed that Section 106 of the Patents Act which provides a remedy against a groundless threat, did not comprise a qualification that such remedy does not apply, if the person issuing the threat, with due diligence, commences an infringement action. The Court noted that such qualification was specifically provided in the other Intellectual Property Laws, particularly Section 142(2) of Trade Marks Act 1999 and Section 60 of the Copyrights Act 1957, and there did not appear to be any reason for the absence thereof in the Patents Act. The Court considered the legislative history of Section 106 of the Patents Act and observed that such aberration might have occurred in view of the fact that the Indian Patents Act was inspired by the contemporaneous UK law. However, the Court left this question unanswered observing that the same did not require consideration in the present matter, as the Defendant did not rely on Section 106 of the Patents Act in the Hyderabad Suit.

This order or judgment is significant in nature as it simplifies the legal position that any issue with regard to patents is to be agitated within the contours of the Patents Act and not beyond the same. This will act as a deterrent to infringers who resort to frivolous proceedings by the method of clever drafting to defeat or delay the valuable rights of patent owners.