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.
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
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.
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.
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
Email: [email protected]
, Ph no: 9990389539