PRADEEP SHARMA Vs. UPL LTD

JUDGEMENT

(1.) The appellant is aggrieved by an order restraining him from infringing the plaintiff/respondent's patents (IN 206130, IN 194225 and IN 244551- hereafter as "INs 130, 225 and 551", respectively). IN 225 titled "a process of preparing a chemically stable synergistic herbicidal composition" is a process patent; IN 130 titled as "a chemically stable synergistic herbicidal composition" is a product patent and IN 551 titled as "a stable synergistic herbicidal composition" is both a product and process patent. According to the plaintiff's claim, "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. The two compounds are not physically and chemically compatible; consequently no single composition containing both the compounds was available. Plaintiff claims to have developed a composition comprising of these compounds along with suitable excipients such as inert fillers, stabilizer (0.1-1 wt%), defoamer (0.1-1 wt%), wetting and dispersing agents. The composition is in the form of wettable granules (hereafter "WG"). The uniqueness of the composition is that it is effective against both grassy as well as broad leaf weeds.

(2.) On 06.01.2003, a patent application titled "A process for preparing chemically stable Synergetic Herbicidal Composition" whereon the process patent IN 225 was granted. On 18.01.2009, patent application titled "A chemically stable Synergetic herbicidal Composition" was filed. Pre-grant opposition was filed by Gharda Chemicals Ltd. against this application which was dismissed vide order dated 25.01.2007 by the patent office which resulted in grant of product parent IN 130. Gharda Chemicals had challenged the claim in pre grant opposition; its petition (before Bombay High Court) was dismissed. The parties entered into a settlement on 03.10.2008 wherein Gharda acknowledged plaintiff to be the owner of IN 225 and IN 130 and agreed not to infringe the two suit patents. Plaintiff claimed 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 Sec. 107 of the Patents Act. The plaintiff claimed that various reputed companies had obtained licenses of its patents, including Tata Chemicals Ltd., Coromandal International Ltd., Gharda Chemicals Ltd. etc. The plaintiff claimed that they became aware that the defendants/appellants were participating in a tender floated by Directorate of Industries and Enterprises Promotion, U.P. for manufacture and supply of Sulfosulfuron (75%) + Metsulfuron Methyl (5%) WG. It was further revealed that defendants had applied for registration under Sec. 9 of the Insecticides Act, 1968 for the composition of Sulfosulfuron (75%) + Metsulfuron Methyl (5%) WG which is the composition as per the patents of the plaintiff. The plaintiff claimed that it alone has the rights to manufacture and sell Sulfosulfuron (70-80%) + Metsulfuron Methyl (5-10%) WG meaning that composition is in the form of granules, the defendant is liable to be injuncted from infringing the plaintiff's patents. Based on these facts and assertions, the plaintiff filed the suit for infringement before this court.

(3.) The defendant's position in the suit - and in resistence of the ad interim injunction claim was 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 sulfonylurea as including these two have been known since 1990s. The plaintiff had to show that each element of the patent products/compositions were covered by the scope of the specific claim of any of suit patents asserted by it and if admittedly any essential element is missing then there can be no infringement. The defendant argued that a comparison of the two products, showing the difference between the compositions is evident. The plaintiff's product registration 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 defendant's claim is outside the scope of the suit patents. The defendant says this 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 held that defendant's registration did not cover a composition which was prepared by a process IN 225. It was pointed out that it filed an appeal against this decision before the statutory authority in the year 2006 itself but did not pursue it. The Plaintiffs denial that the appeal related only to the process patent IN 225 and 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.