Recent Patent Litigation Cases (2014-15): India

Patent Litigation in India has steadily increased over last 2-3 years. Dramatic swift has been
observed in the innovators perspective from the mere aspect of invention to gaining patent
protection for their respective invention. Patent owners have adopted aggressive approach
towards their patent protection and enforcing their proprietary rights as businesses, are now
well-positioned in the realm of patent litigation. The patent owners are not at all hesitant to
challenge the validity of patent rights of their rivals. There has also been gradual increase in the
understanding of the complex patent infringement and validity issues.
We will now deal with some of the recent and important patent litigation cases in India.
Merck vs. Glenmark over Sitagliptin
In an interesting note, Honble Supreme Court of India on Special Leave Petition filed by
Glenmark stayed the Delhi High Court order which passed injunction against Glenmark for the
generic drug Sitagliptin till 28th April 2015. Merck Sharp & Dohme filed an application for an ad
interim injunction restraining the respondent/defendant Glenmark Pharmaceuticals from using
its patented product Sitagliptin (Indian Patent No. 209816) at the Supreme Court. The Delhi high
court conclusively held that all the three ingredients (Prima facie, Irreparable injury and balance
of convenience) for passing the order of injunction were established by MSD and hence
injuncted Glenmark from manufacturing and selling of Zita and Zitamet.
Ericsson vs. Xiaomi
In December 2014, Ericsson had filed a suit against Xiaomi in India for the alleged infringement
of the 8 standard-essential patents. The Delhi High Court granted an ex-parte injunction on the
sale, manufacture, advertisement, and import of Xiaomis devices.
Xiaomi claimed that its latest devices in the Indian market (as of December 2014), the Mi3,
Redmi1S and Redmi Note 4G, contained Qualcomm chipsets, which implemented technologies
licensed by Ericsson. Xiaomi subsequently challenged the injunction before a Division Bench of
the Delhi High Court, which issued temporary orders to allow Xiaomi to resume the sale, import,
manufacture, and advertisement of its mobile devices subject to the following conditions:

Xiaomi would only sell devices having Qualcomm chips.

Xiaomi would deposit Rs. 100 towards royalty for every device it imported to India from
the date of the launch of the device in India toJanuary 5, 2015. This amount was to be
kept in a fixed deposit for three months during the proceeding of the case.

Novartis vs. Cipla

In another patent litigation case, Delhi High court barred Indian generic drugmaker Cipla from
making or selling generic copy of Novartiss Onbrez by giving temporary injunction to Novartis.
Citing famous Roche vs Cipla case, the court observed that Novartis has a strong prima facia
case and as the validity of the patent is not seriously questioned, there is a clear way out to
grant injunction. Further, the court observed that Cipla did not provide any figures about the

inadequacy or shortfall in the supply of the drug. Earlier Cipla lunched its generic version of
Indacarterol in October claiming urgent unmet need for the drug in india.
Without going conventional way, Cipla, also approached the Department of Industrial Policy and
Promotion (DIPP) to exercise its statutory powers under Section 66 and Section 92 (3) to revoke
Indian Patents IN222346, IN230049, IN210047, IN230312 and IN214320 granted to Novartis
AG for the drug Indacaterol. Cipla argued on the basis of 3 main points i.e. epidemic or a
public health crisis of COPD, unable to manufacture the same in India by Patentee and high
cost of patented drug.
Vringo Vs. ZTE
In January 2014, Vringo and Vringo Infrastructure filed a patent infringement suit in the Delhi
High Court against ZTE, over the alleged infringement of its patent IN200572.
In February 2014, the Delhi High court granted an ad-interim ex-parte injunction restraining ZTE
from importing, selling, advertising, installing or operating devices that comprise the infringing
components. The High court also appointed local commissioners to inspect ZTEs premises and
instructed customs authorities to detain ZTEs shipments that may contain such devices and to
notify Vringo. In March 2014, ZTE appealed against the injunction, which was vacated
on August 5 the same year with ZTE being ordered to deposit Rs. 17.85 crore to the court.
The suit is sub judice now. As of August 2014, ZTE had filed for the revocation of IN200572 on
grounds of it not being innovative as well as for violating some statutory provisions under
Section 64 of the Indian Patents Act.
Reference:http://inpublic.globenewswire.com/2014/09/02/VRINGO+PROVIDES+UPDATE+TO+
SHAREHOLDERS+HUG1853040.html
Vringo vs. Asus
In April 2014, Vringo filed a patent infringement suit against AsusTek Computer Inc. in Delhi
High Court. As per public updates issued by Vringo to its shareholders, Vringo has alleged the
infringement of patent IN223183 entitled Method and system for providing wireless
communication using a context for message compression by Asus in India.
Asus had claimed that in the context of IN 223183 it was using technology licensed to it by
Google. In August 2014, Google filed a request to become a party to the proceedings.
Vringo had requested for an injunction on Asus use of the technology in India. The injunction
has not been granted yet. No further information about the lawsuit is publicly available.
Reference:http://inpublic.globenewswire.com/2014/09/02/VRINGO+PROVIDES+UPDATE+TO+
SHAREHOLDERS+HUG1853040.html
SYMED Labs vs. Glenmark Pharmaceuticals
In another case of SYMED Labs vs. Glenmark Pharmaceuticals, Symed Labs Ltd. had sued
Glenmark Pharmaceuticals Laboratories before the Delhi High Court for allegedly infringing two

of its patents: IN213062 & 213063. First patent was granted for Novel intermediates for
Linezolid and related compounds while the 063 patent was granted for A novel process for the
preparation of linezolid and related compounds. While declaring the judgment on 9 th Jan 2015,
the judge convinced that the Plaintiff has got good prima facie case in favour of SYMED. Further
the judge decided that protection to the patent processes ought to be granted to the Plaintiff as
damages will not be an efficacious remedy. Thus, there will be irreparable loss and injury
because of the long uninterrupted use of patents, the balance of convenience also lies in favour
of the Plaintiff. Thus the judge granted an ad interim injunction restraining Glenmark from
manufacturing, selling, offering for sale, advertising or directly or indirectly dealing in the
production of Linezolid manufactured in a manner so as to result in infringement of the Plaintiffs
registered Patents.
Maj. (Retd.) Sukesh Behl & Anr. vs Koninklijke Phillips
In this litigation case, Sukesh Behl made a counter claim for revocation of the suit Patent No.
218255 under Section 64(1)(m) of the Patents Act, 1970 (for short the Patents Act) for noncompliance of the provisions of Section 8. Earlier in another suit Koninklijke Phillips sought for
permanent injunction restraining Sukesh Behl from infringing its patent and for other incidental
reliefs. While delivering the judgement, the judge answered the question of whether the failure
to comply with the requirement of Section 8 of the Patents Act would invariably lead to the
revocation of the suit patent under Section 64(1)(m) of the Patents Act, the word may
employed in Section 64(1) indicates that the provision is directory and raises a presumption that
the power of revocation of patents conferred under Section 64(1) is discretionary.
Citing Chemtura case, the judge hold that the power to revoke a patent under Section 64(1) is
discretionary and consequently it is necessary for the Court to consider the question as to
whether the omission on the part of the plaintiff was intentional or whether it was a mere clerical
and bonafide error. Finally, the judge dismiss the plea of Sukesh Behl for revocation of said
patent under section 64 (1)(m).
Enercon vs. Dr. Aloys Wobben
In this land mark decision, Honble Supreme Court of India addressed the multiplicity of patent
proceeding cases with respect to Invalidation, opposition and revocation. Dr.Aloys Wobben has
filed around 19 infringement suits before the High Court and Enercon India Limited have filed
around 23 revocation petitions before the Appellate Board, praying for the revocation of the
patents held in the name of the Dr. Wobben. The respondents had also filed counter claims to
the patent infringement suits filed by the appellant. Even though some revocation petitions
have been settled by the IPAB, the same issues were being re-agitated by Enercon before the
High Court. The Supreme Court of India following rules firstly, if any person interested has
filed proceedings under Section 25(2) of the Patents Act, the same would eclipse all similar
rights available to the very same person under Section 64(1) of the Patents Act. This would
include the right to file a revocation petition in the capacity of any person interested (under
Section 64(1) of the Patents Act), as also, the right to seek the revocation of a patent in the
capacity of a defendant through a counter-claim (also under Section 64(1) of the Patents Act).
Secondly, if a revocation petition is filed by any person interested in exercise of the liberty
vested in him under Section 64(1) of the Patents Act, prior to the institution of an infringement
suit against him, he would be disentitled in law from seeking the revocation of the patent (on
the basis whereof an infringement suit has been filed against him) through a counterclaim. Clearly, this judgement laid a smooth road for complex patent litigation practices in
India.