This case revolves around the alleged infringement of patents owned by UPL Limited concerning a unique herbicidal composition and process. UPL sought interim relief through an injunction restraining the defendants from manufacturing, selling, or dealing with products allegedly infringing their patents.

Background:
UPL Limited is engaged in the manufacture and sale of various agricultural products, including herbicides and weedicides. The dispute pertains to three patents owned by UPL: IN 194225 - A process patent for preparing a chemically stable synergistic herbicidal composition. IN 206130 - A product patent for a chemically stable synergistic herbicidal composition.

IN 244551 - A combined product and process patent.These patents claim a stable synergistic composition of Metsulfuron Methyl and Sulfosulfuron, two herbicides effective against specific types of weeds. The plaintiff claimed that the defendants infringed these patents by applying for the registration of a similar product under the Insecticides Act, 1968.

• Brief Facts of the Case: UPL Limited claimed that their composition effectively targeted both grassy and broadleaf weeds using Metsulfuron and Sulfosulfuron in specified proportions with excipients such as stabilizers and dispersants. The defendants, Pradeep Sharma and others, applied for registration of a product containing a similar combination of these herbicides. UPL sought an interim injunction to prevent the defendants from manufacturing or marketing the product during the pendency of the case.
• Issues Raised:
  • Whether the defendants' product infringed UPL's registered patents?
  • Could the defendants challenge the validity of UPL's patents in their defense?
  • Did the defendants' product differ materially from UPL's patented composition?
  • Was UPL entitled to an interim injunction?
• Plaintiff's Submissions (UPL Limited):
  • UPL argued that its patents covered a unique and novel composition that was effective against both types of weeds.
  • It claimed that the defendants' product contained all essential elements of UPL's patented composition, differing only in minor details, such as the absence of a stabilizer.
  • UPL cited prior cases, including F. Hoffmann-La Roche Ltd. v. Cipla Ltd., to assert that minor variations in composition do not exempt a product from infringement.
  • UPL emphasized that their patents had been upheld in pre-grant and post-grant oppositions, and similar licenses were granted to other companies.
• Defendant's Submissions:
  • The defendants argued that their product did not infringe UPL's patents as it differed in composition, lacking some essential elements like stabilizers and specific excipients.
  • They contended that UPL's patents lacked novelty and were based on prior art, including studies by Dr. C.P. Singh, which suggested sequential rather than combined use of the herbicides.
  • The defendants questioned the validity of UPL's patents under sections of the Patents Act, claiming obviousness, lack of inventive steps, and prior public knowledge.
  • They argued against granting an injunction, stating that UPL had concealed material facts.
• Judgments Referred and Their Context:
  • F. Hoffmann-La Roche Ltd. v. Cipla Ltd: Established principles for claim construction and determining infringement. Applied to compare UPL's patents with the defendants' product.
  • Smithkline Beecham Plc v. Generics (UK) Ltd: Addressed the concept of "obviousness" in patent law.
  • Shogun Organics Ltd. v. Union of India: Clarified that the Insecticides Registration Committee lacks jurisdiction over patent disputes.
  • Bristol-Myers Squibb Co. v. J.D. Joshi and Anr.: Highlighted that balance of convenience favors protecting patented inventions when infringement is likely.
• Reasoning of the Judge:
  • The court held that the defendants' product prima facie infringed UPL's patents since its composition was largely identical, with minor differences deemed non-essential.
  • Dr. C.P. Singh's prior research was found to contradict UPL's patented invention and could not negate the novelty of the patents.
  • The court noted that the defendants failed to prove invalidity of the patents. A pre-grant opposition had already been dismissed, and a settlement with another challenger, Gharda Chemicals, had affirmed UPL's rights.
  • The court emphasized that the Insecticides Registration Committee could not decide on patent matters.
• Decision: The court granted an interim injunction restraining the defendants from manufacturing, selling, or dealing with products infringing UPL's patents during the pendency of the suit.

Case Title: UPL Limited Vs. Pradeep Sharma and Ors.
Date of Order: February 21, 2018
Case Number: IA 9585/2017 in CS (Comm.) 556/2017
Neutral Citation: MANU/DE/0772/2018
Court: High Court of Delhi
Judge: Hon'ble Justice Mukta Gupta

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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