This case concerns a suit filed by Novartis AG and its affiliate seeking a permanent injunction to restrain Natco Pharma Limited from infringing its Indian Patent No. 276026 (hereafter "IN'026"), along with reliefs for rendition of accounts, damages, and delivery of infringing goods. A key development was the Defendant's request to file an additional written statement, which was contested by the Plaintiffs.

• Patent Ownership and Dispute Initiation: Novartis owns Indian Patent IN'026, granted in September 2016, covering specific pharmaceutical innovations. The Plaintiffs claimed Natco infringed their patent by manufacturing and marketing products using their patented invention.
   
• Interim Injunction: The Court granted an interim injunction in favor of the Plaintiffs on January 9, 2023, barring Natco from further infringement. Natco's attempts to vacate this injunction were dismissed on April 9, 2024.
   
• Divisional Application: Novartis had filed a Divisional Application, IN 5338/DELNP/2014 ("IN'5338"), linked to the same innovation but chose not to pursue it, leading to its rejection in December 2022. Natco argued that the rejection of the Divisional Application was a significant development and sought to include it in the proceedings through an additional written statement.
   
• Brief Facts of the Case: Natco sought leave under Order VIII Rule 9 of the Code of Civil Procedure (CPC) to file an additional written statement. Natco argued the Plaintiffs had suppressed material facts related to the Divisional Application and its rejection. Novartis opposed the application, asserting the rejection of the Divisional Application was immaterial to the suit, as it was unrelated to the validity of IN'026.
   
• Issues Involved:
  • Materiality of the Divisional Application: Whether the facts surrounding the Divisional Application (its rejection and related prior art) were relevant to the present dispute.
  • Application of Order VIII Rule 9 CPC: Whether the Defendant should be permitted to file an additional written statement given the procedural constraints of the Commercial Courts Act, 2015.
  • Impact on Interim Injunction: Whether allowing the additional written statement would affect prior decisions on the interim injunction.
     
• Submissions of the Parties:
  • Natco (Defendant): The Divisional Application's rejection revealed prior art that undermines the Plaintiffs' claims. The Plaintiffs failed to disclose the rejection, violating their duty under Order XI Rule 1(12) CPC, which mandates continuous disclosure of material facts. Filing an additional written statement was necessary to ensure the dispute's full adjudication.
  • Novartis (Plaintiffs): The rejection of the Divisional Application was procedural, not on merits, and hence irrelevant. Prior decisions on the interim injunction already considered the cited prior art, and the Defendant's claims amounted to issue estoppel. Allowing the additional written statement would delay proceedings and prejudice the Plaintiffs.
     
• Reasoning and Analysis by the Court:
  • Materiality of Divisional Application: The Court noted that while the Divisional Application was not pursued by the Plaintiffs, its rejection could be considered a subsequent development relevant to the case. However, the rejection was procedural, not on the merits of the patent claims, as confirmed by prior judgments.
  • Procedural Framework under Order VIII Rule 9 CPC: The Court emphasized its discretionary power to allow additional pleadings under Order VIII Rule 9 CPC, provided they were necessary for justice. It clarified that the statutory limit for filing a written statement under Order VIII Rule 1 (120 days under the Commercial Courts Act, 2015) did not apply to subsequent pleadings.
  • Impact on Interim Injunction: The Court rejected Natco's argument that the Divisional Application's rejection warranted revisiting the interim injunction. It highlighted that prior judgments (January 9, 2023, and April 9, 2024) had comprehensively addressed the validity of IN'026 and the relevance of cited prior art.
  • Duty of Continuous Disclosure: The Court agreed with Natco that both parties had a duty to disclose material facts until the suit's resolution. It concluded that the rejection of the Divisional Application, though not critical, was a fact that could be brought on record without prejudice to the Plaintiffs.
     
• Decision:
  • Grant of Leave to File Additional Written Statement: The Court allowed Natco to file an additional written statement to incorporate facts related to the Divisional Application. It directed Natco to restrict its additional pleadings to matters already raised in its prior application for vacation of the interim injunction (I.A. 4636/2023). Natco was given 30 days to file the additional written statement.

Conclusion:
This case underscores the balance courts must strike between procedural efficiency and ensuring complete adjudication. The judgment highlights:The discretionary scope of Order VIII Rule 9 CPC in permitting subsequent pleadings.The importance of continuous disclosure in commercial litigation.The distinction between procedural and substantive grounds in determining the relevance of additional evidence.

Case Title: Novartis AG & Another Vs. Natco Pharma Limited
Date of Order: January 8, 2025
Case Number: CS(COMM) 229/2019 
Neutral Citation: 2025:DHC:51
Court: High Court of Delhi, New Delhi
Judge: Hon'ble Ms. Justice Mini Pushkarna

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