TaxTMI 
TaxTMI 
TaxTMI 
2019 (1) TMI 1980
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....ayan Ray, Anindita Mitra, Soumo Palit, Chaitanya Mehta, Diya Kapur, Essenese Obhan, Abhushek Saket, Neha Khanduri, Rishabh Sharma, Sugandha Batra, Raghav Anand, Vrinda Bhandari, Feroz Ali, Ketan Paul, Reeja Varghese, Tushar Bhushan, Ranjan Kumar Pandey, Sandeep Bisht, Liz Mathew, Jitendra Kumar, Ram Krishna, Aditya Dhar, Anuj Tiwari, Rahul Kumar, Ritwik Sahay, Aditya Sharma, Praneet Pranav, Ankita Chaudhary Rathi, Santosh Kumar, Nachiketa Joshi, Gunjan Singh, Satya Mitra, Amar Dave, P.S. Sudheer, Rishi Maheshwari, Anne Mathew, Pooja Katara, Aparna Kareer, Senthil Jagadeesan, Sonakshi Malhan, Suriti Chowdhary, Mrinal Kanwar, Satya Vikram, Shahana Farah, Manish Madhukar, Rahul Dubey, M. Haque, Chitral Gambhir, Pranav Gupta, Lekha V.G., Manisha Singh, Abhai Pandey, Devanshu Sajlan, Sanyat Lodha, Deepak Joshi and Akash Lamba, Advs. JUDGMENT Navin Sinha, J. 1. Leave granted. 2. The Appellants/Plaintiffs in Civil Appeal Nos. 4616-4617 of 2018 instituted Civil Suit (Comm) No. 132 of 2016 seeking permanent injunction against the Defendants from using the trademark "BOLGARD" and "BOLGARD II" brand cotton technology, violating the registered patent No. 214436 of the Plaintiffs, and also ....
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...."the Act") in respect of plants and seeds that contained DNA sequences, denying any infringement. 5. The learned Single Judge on 28.03.2017, while deciding the Plaintiffs' application for injunction, observed that the issues arising in the suit necessarily required formal proof, particularly expert opinion, which in complicated matters like that of patent were crucial for ascertaining the breadth of the monopoly granted by the specifications of a patent claim. The nature and extent of the patent claim was more properly a matter to be examined after pleadings were complete and evidence adduced on the issues arising, which did not merit comments at the stage of interim injunction. Considering the existing patent registered Under Section 48 of the Act, it was ordered that during the pendency of the suit, the parties shall remain bound by their respective obligations under the sub-licence agreement and that the licence fee/trait value payable by the Defendant shall be governed by the laws in force. The learned Single Judge simultaneously only issued notice on the counter claim No. 51 of 2016. The order of injunction dated 28.03.2017, therefore did not deal with or consider the cou....
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....acts requiring formal proof and expert evidence, to be considered at the hearing of the suit, as rightly observed by the Single Judge. The Defendants in their memo of appeal themselves contended that the issue regarding existence of the patent and/or its revocation could not have been decided summarily by the learned Single Judge as these were matters which required evidence and could be adjudicated only at the final trial of the suit. The Plaintiffs' claims were under 25-27 only. The process claims 1-24 was never an issue in consideration before the Single Judge and yet the Division Bench delved into the same and held the process claims to be bad also. 9. The Plaintiffs had never consented to a summary adjudication regarding the validity of its patent. The consent referred to by the Division Bench, had been given only to decide whether the Plaintiffs' patent had been infringed or not, as also the scope of the patent, so as to allow or disallow the relief of injunction. It is incomprehensible that the Plaintiffs holding a valid registered patent under the Act nonetheless would have agreed to a summary consideration and validation/invalidation of the patent. The patent comp....
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....ce regime. The seeds from the Plaintiffs' patented technology were the highest selling compared to similar other seeds. The Plaintiffs have no intention to sue any Indian farmer for violation of patent. It was lastly submitted that either this Court may remand the entire matter for adjudication of the patent issue and infringement or decide the patent issue and then remand the suit for other issues. 11. Shri Kapil Sibbal contended that a chemical/gene/DNA construct is not a plant variety, and is not eligible for protection under the PPVFR Act. A gene cannot be a plant variety and it would be denied such registration on account of lack of fulfillment of the conditions precedent in Section 2(za) read with Sections 14 and 15. A gene cannot be a "plant grouping", "within a single botanical taxon of the lowest rank", which in simple terms means that it cannot belong to the lowest rank of a plant, namely a species. The PPVFR Act came into effect from 2007 and in the last 11 years, no infringement action has been filed under the same or injunction obtained. The department of bio-technology on their official website has acknowledged the role agro-biotechnology has to play in feeding b....
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....bmitted that the "product" in claim 25-27 for NAS is a chemical is false, because any chemical that is inserted into a plant is not capable of being passed on to the seeds of that plant and to the future progeny as the chemical will be metabolized by the plant itself and will never be transmitted to its seeds. Further, the NAS, by the wording of claims 25-27 itself, is a plant gene which is meant to be an inherent, intrinsic and integral part of the plant as it exists at the sub cellular level. The cell after transformation with the gene through the biological process of tissue culture results in a transgenic plant that produces seeds having the essential characteristic of these transgenic plants. Therefore, claims 25 to 27 even if it represents merely a "gene" will manifest as an inseparable and inheritable part of a plant and cannot be patented. The NAS gene inserted into the plant becomes an inseparable part of the plant at the sub-cellular level by an irreversible biological process. It exists in every cell of the transformed plant. It not only expresses in the plant to produce endotoxin but also inherits into progeny plants in perpetuity. It does not result in a "product" whic....
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.... implant stage. The inventive qualities begin when the NAS is inserted in a plant cell and not before that stage. Once, the NAS is inserted in a plant cell, the exclusion Under Section 3(j) applies and the PPVFR Act becomes operative. 17. Shri Venugopal submitted that a conjoint reading of Section 2(j) and Section 3(c) of the Act makes it clear that it excludes patentability both of transgenic plants (invented through recombinant gene technology in the laboratory) and those invented through conventional breeding techniques even where a new plant, variety or species is initially created through genetic manipulation, to the extent that the subsequent production or propagation of the plant, variety or species is done through "an essentially biological process", the biological process would not be patentable Under Section 3(j) of the Act. Even if patent exclusion Under Section 3(j) was not applicable, still the patent claim could never permit Plaintiffs to claim the right to prevent farmers from making, using, offering for sale or selling plants or seeds of the cotton plant that contain Bt. gene. The patent of an artificial gene and the process for inserting it into the genome of a pl....
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....s. 20. The patent claims 1-24 are with regard to the processes while claims 25-27 are with regard to the chemical product called NAS. According to the Plaintiffs, the latter was a man-made DNA construct that did not exist in nature and did not otherwise form part of a plant existing in nature. The DNA construct was inserted into a plant which confers the trait of insect tolerance to the plant. It comprises of three different components i.e. (i) A promoter, (ii) A gene for the production of Cry2Ab 5-endotoxin and (iii) a third component for the production of a transit peptide. Of these three, Cry2Ab 5-endotoxin is stated to be a man-made gene. This nucleic acid sequence is then inserted into the cell of the plant at a particular location resulting in the production of "a fusion protein" which comprises the Cry2Ab 5-endotoxin 7 bonded with transit peptide. The production of a fusion protein is critical in this respect for the technology to be effected in plants. The bacillus thuringiensis strain does not produce such a fusion protein. It is the Plaintiffs' claim that it is only its technology that allows a cotton plant to produce the Cry2Ab 8-endotoxin protected inter-alia by cl....
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.... expert evidence also, at the stage of injunction in the manner done, was certainly neither desirable or permissible in the law. The suit involved complicated mixed questions of law and facts with regard to patentability and exclusion of patent which could be examined in the suit on basis of evidence. 23. Section 64 of the Act provides for revocation of patent based on a counter claim in a suit. It necessarily presupposes a valid consideration of the claims in the suit and the counter claim in accordance with law and not summary adjudication sans evidence by abstract consideration based on text books only. The Code of Civil Procedure provides a detailed procedure with regard to the manner in which a suit instituted Under Section 9, including a counter claim has to be considered and adjudicated. The Code mandates a procedure by settlement of issues, examination and cross examination of witnesses by the parties, including discovery/inspection of documents, culminating in the hearing of the suit and decree. A suit can be disposed of at the initial stage only on an admission inter alia Under Order 12 Rule 6 or when the parties are not in issue Under Order 16 Rule 1 and the other groun....