The case at hand revolves around the refusal of an injunction in a patent infringement lawsuit, with the court favoring the defendant based on the principle of the "balance of convenience." The lawsuit pertains to a patent (No. 221536) titled "Water Soluble Iron Carbohydrate Complex And A Process For Producing Water Soluble Iron Carbohydrate Complex" which covers an intravenous iron deficiency therapy product. This article delves into the key aspects of the case, including the patent's history, the alleged infringement, and the court's reasoning in declining the injunction.

Background:
The patent in question was filed in October 2003 and granted in June 2008. The product received marketing approval in India in 2011. and expiring in October 2023. The World Health Organization (WHO) has also assigned the International Nonproprietary Name FERRIC CARBOXYMALTOSE to the plaintiff's invention.

Alleged Infringement and Notice:
The defendants sent a notice to the plaintiff on 07.06.2023, thereby sought an acknowledgment that they are not infringing the patent. The defendant claimed that they are using a process different from the one disclosed and claimed in the patent.

Product or Product-by-Process Patent:
A significant point of contention in this case is whether the patent is a 'product' and 'process' patent or a 'product-by-process' patent. A prior decision by a Co-ordinate Bench of the same court, in a related case filed by the plaintiffs concerning the same patent, held that 'product-by-process' patents are recognized in Indian jurisprudence.

Such patents are limited by the process through which the product is obtained, and third parties manufacturing the same product using a different process do not infringe the patent. However, it is worth noting that this decision is under challenge before the Division Bench in FAO(OS) (COMM) 159/2023. Therefore, the controversy surrounding the nature of the patent remains unresolved.

The Balance of Convenience:
The central issue leading to the refusal of an injunction in this case is the balance of convenience. The court weighed the interests of both parties involved, i.e., the plaintiffs and the defendants, in determining whether to grant an interim injunction.

Irreparable Loss to Defendants:
The court considered the fact that the defendants had already entered the market with their product, which they claimed did not infringe the patent. Granting an interim injunction at this stage would potentially cause irreparable loss to the defendants, as they would be prevented from selling their product.

Plaintiffs' Interests:
To protect the interests of the plaintiffs, the court opted for an alternative approach. Rather than granting an injunction, it directed the defendants to provide an account of their manufacturing and sales of FERRIC CARBOXYMALTOSE (FCM) for the relevant period. This would allow the plaintiffs to assess the extent of any potential infringement and seek appropriate remedies if necessary.

The Concluding Note:
In the case of patent infringement, the decision to grant or deny an injunction is a delicate balancing act. The court's decision in this instance to refuse an injunction in favor of the defendant was influenced by the considerations of the balance of convenience. It took into account the potential harm to the defendants if an injunction was granted and sought to protect the interests of the plaintiffs through alternative means. Moreover, the ongoing dispute regarding the nature of the patent adds another layer of complexity to the case, as it awaits resolution by the Division Bench. The refusal of the injunction in this case underscores the significance of carefully evaluating the equities involved in patent infringement cases.

Case Law Discussed:
Case Title: Vifor International Ltd. & Anr. vs Biological E Limited
Date of Judgement:19/09/2023
Case No. CS(COMM) 434/2023
Neutral Citation No: 2023:DHC:6864
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: Vikas Mahajan, H.J.

Disclaimer:
Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539