Madras High Court
Adiuvo Diagnostics Private Limited vs Union Of India on 25 March, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2025:MHC:835
W.P.(IPD)No.23 of 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 25.03.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
W.P.(IPD)No.23 of 2023
and W.M.P.(IPD)Nos.5 & 7 of 2023
Adiuvo Diagnostics Private Limited,
Represented by its Authorised Signatory Ms. Geethanjali Radhakrishnan
Unit 18, Golden Jubilee Biopark For Woman,
4th Main Road, 2nd cross street,
Inside SIPCOT IT Park,
Siruseri, Chennai - 603 103, India. ... Petitioner
-vs-
1. Union of India,
Representation by its Secretary, Ministry of Finance,
Department of Revenue, New Delhi.
2. Office of Controller General of
Patents, Designs and Trademarks,
Boudhik Sampada Bhawan, S.M. Road,
Antop Hill, Mumbai 400 037.
3. Office of the Deputy Controller of Patents,
and Designs, Patent Office,
Intellectual Property Office Building,
G.S.T. Road, Guindy, Chennai - 600 032.
1/20
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W.P.(IPD)No.23 of 2023
4. University Health Network
Suite 150, 101 College Street, Toronto,
Ontario, M5G 1L7, Canada. .. Respondents
Prayer: Writ Petition (IPD) filed under Article 226 of the Constitution of
India for issuance of Writ of Certiorarified Mandamus calling for the
records relating to the impugned order dated 19.07.2023 in Patent in respect
of Indian Patent Application No. 9067/DELNP/2010, with Patent No.
439474 issued by the 3rd respondent and quash the same and direct the 3rd
respondent to revoke the consequential grant of the Patent No.439474
corresponding to Patent Application No. 9067 / DELNP / 2010, and remand
the matter back to a different officer of the Indian Patent office to re-hear
the pre-grant opposition against Patent Application No. 9067 / DELNP /
2010 on merits, in a time bound manner and in accordance with law after
taking into consideration all the submissions and documents filed.
For Petitioner : Ms.Vindhya S. Mani
Mr.Kiran Manokaran
Mr.Sheerabdhinath
for M/s.Lakshmikumaran and Sridharan
For R1 to R3 : Mr.J.Madhanagopal Rao, SPC
2/20
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W.P.(IPD)No.23 of 2023
For R4 : Mr.P.V.Balasubramaniam, Senior Counsel
for Ms. Archana Shanker
Mr.K.Premchandar
Mr.N.C.Vishal
Mr.Abhishek Kumar
Ms.S.Yeseswini
ORDER
This writ petition raises the question as to whether discretionary
jurisdiction under Article 226 of the Constitution of India may be exercised
in respect of an order rejecting a pre-grant opposition.
2. The 4th respondent herein filed Indian Patent Application
No.9067/DELNP/2010 in respect of the invention titled 'Device and Method
for Fluorescence-based Imaging and Monitoring'. The petitioner lodged a
pre-grant opposition in respect thereof and such opposition was rejected
while granting the patent by impugned order dated 19.07.2023. The present
writ petition was filed in the said facts and circumstances.
3. Learned counsel for the petitioner submitted that the impugned
order disregards material evidence and is completely unreasoned thereby
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justifying interference under Article 226. The first contention of learned
counsel was that evidence placed on record by both parties finds no mention
in the impugned order. In particular, learned counsel points out that the
petitioner had placed on record the affidavit of Mr.Ananth Krishnan and,
subsequently, the affidavit of Dr. Balasubramaniyam Pesala. After pointing
out that these were affidavits of persons skilled in the art (PSITA), learned
counsel contends that it cannot be said that these affidavits were considered
in substance merely because the impugned order contains reference to cited
prior arts.
4. By inviting my attention to the conclusion in the impugned order
with regard to lack of novelty, learned counsel submits that the Controller
merely recorded and accepted the contention of the 4th respondent/patent
applicant with regard to the alleged difference between the CCD sensor chip
of D2 and the image acquisition device used in the impugned invention. She
submits that the order contains no reasons either for accepting the
submission of the patent applicant or for rejecting the contention of the
opponent.
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5. Similarly, with reference to the conclusion on inventive step over
D1-D3, learned counsel submits that the contention of the
petitioner/opponent that D3 inherently teaches the existence of power
supply and portability was noticed, but the Controller recorded the finding
that the invention was not obvious merely because D1 and D2 in
combination with D3 failed to disclose all the features of the alleged
invention. In other words, the contention of learned counsel is that the
Controller conflated the requirements of novelty analysis with those of
obviousness analysis. With reference to prior art D7, learned counsel
submitted that the conclusion that D7 is not portable was reached entirely
based on the submissions of the patent applicant and that no independent
reasoning is discernible.
6. As regards the conclusions with regard to Section 3(d) and 3(f) of
the Patents Act, 1970 (the Patents Act), learned counsel submits that the
objection under Section 3(d) that the impugned invention involved mere use
of a known process, machine or apparatus should not have been rejected
merely because it was previously held that the machine passes the novelty
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test. Likewise, she submitted that the objection under Section 3(k) that the
impugned invention is a mere arrangement or re-arrangement or duplication
of known devices each functioning independently of one another in a
known way was rejected by stating without basis that the components of the
device do not function independently, and by merely recording that the
contentions of the patent applicant in paragraph 143 of the reply statement
were accepted.
7. Before concluding, learned counsel pointed out that the caveat
petition lodged in the Delhi High Court by the 4th respondent was not
disclosed in the writ petition because of lack of materiality inasmuch as no
appeal lies against the impugned order.
8. Mr.P.V.Balasubramaniam, learned senior counsel, made
submissions in response. His first contention was that the Patents Act does
not provide for an appeal against an order rejecting a pre-grant opposition.
Consequently, he contends that the writ petition cannot be used as an
indirect vehicle to present an appeal in disguise. Therefore, as regards the
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contentions of learned counsel for the petitioner on the findings on
objections raised by the petitioner, he submits that the correctness of the
decision cannot be assailed in a writ petition.
9. His second contention is that the petitioner has several alternative
remedies, such as the filing of a post-grant opposition, the filing of a
revocation petition and even the filing of an appeal, if the petitioner were
unsuccessful in the post-grant opposition. By referring to the impugned
order, learned senior counsel submits that sufficient opportunity was
provided to the opponent and the order was issued after an extensive
hearing. Thus, he submits that principles of natural justice were compliued
with.
10. In support of the contention that the present writ petition is not
maintainable, he referred to and relied upon the following judgments:
(i) Ucb Farchim Sa v. Cipla Ltd. & Others, 2010 SCC OnLine Del
523(Ucb Farchim), particularly paragraphs 13 – 22 thereof ;
(ii) Rich Products Corporation v. The Controller of Patents and
another, W.P.(C)-IPD 8/2024, CM 18-19/2024;
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(iii) Rich Products Corporation v. The Controller of Patents and
another, LPA 257/2024 & CM No.19528/2024(Rich Products Corporation),
particularly paragraphs 10, 11, 14 & 15 thereof;
(iv) Mylan Laboratories Limited v. Union of India and others, 2019
SCC OnLine Del 10319(Mylan Laboratories), especially paragraphs 2, 6 to
8 thereof.
11. By way of a brief rejoinder, learned counsel for the petitioner
contended that the order was opposed by way of a writ petition because it is
completely unreasoned and not merely inadequately reasoned. In support of
the contention that writ petitions have been entertained at the pre-grant
stage, learned counsel referred to and relied upon the following judgments:
(i) Regents of the University of California v. Union of India & others,
2019 SCC OnLine Del 8590, particularly paragraphs 32, 42, 43, 50 to 56
thereof;
(ii) Best Agrolife Limited v. Deputy Controller of Patents & another,
2022 SCC OnLine Del 1982, particularly paragraphs 28, 51 & 52 thereof;
(iii) Indian Network for People living with HIV/AIDS and another v.
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Union of India and others, 2008 SCC OnLine Mad 892, particularly
paragraph 55 thereof;
12. As regards the maintainability of a writ petition notwithstanding
the existence of alternative remedies, learned counsel referred to and relied
upon the landmark judgment of the Supreme Court in Whirlpool
Corporation v. Registrar of Trade Marks, Mumbai & Ors 1998 AIR SCW
3345, particularly paragraphs 15 to 17 thereof, and the judgment of the
Division Bench of the Bombay High Court in Neon Laboratories Pvt. Ltd.
and others v. Troikaa Pharma Limited and others, 2010 SCC OnLine Bom
1799.
13. At the outset, it should be noticed that the petitioner has
approached this Court seeking a discretionary public law remedy. In Ucb
Farchim, the Delhi High Court examined the question whether a writ
petition should be entertained against an order rejecting a pre-grant
opposition. After discussing the matter extensively, the Court concluded
that if the person approaching the Court qualifies as a person interested
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under Section 2(1)(t) of the Patents Act, the Court would ordinarily decline
to exercise jurisdiction in view of the petitioner having an efficacious
alternative statutory remedy. On the other hand, if the petitioner is not a
person interested as defined in the Patents Act, the Court may exercise
jurisdiction if it comes to the conclusion that the person concerned has no
other efficacious remedy or that the interest of justice warrants interference.
These principles were followed by the Delhi High Court in Rich Products
Corporation and Mylan Laboratories.
14. The principles laid down in Ucb Farchim and subsequent
judgments regarding the existence of an alternative remedy should be borne
in mind while examining a challenge to the rejection of a pre-grant
opposition, but they do not lead to the conclusion that this Court's power
under Article 226 is ousted or even whittled down in such circumstances.
The power under Article 226 is undoubtedly wide in amplitude and is
exercisable whenever a statutory authority fails to exercise the jurisdiction
vested in such authority or exceeds its jurisdiction or even exercises
jurisdiction perversely. Being a discretionary power, the existence of an
alternative remedy would be a material, albeit not necessarily conclusive,
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factor to be reckoned in deciding whether to exercise or decline to exercise
jurisdiction. Given the nature of jurisdiction, ordinarily, the decision
making process and not the decision is reviewed under Article 226. Whether
the order impugned herein warrants interference on the basis of principles
governing the exercise of this jurisdiction falls for consideration next.
15. On closely examining the impugned order, any reference to the
affidavits of Mr.Ananth Krishnan, Dr. Balasubramaniyam Pesala or
Dr.Ralph DaCosta is conspicuous by its absence. Although
Mr.P.V.Balasubramaniam contended that the affidavit of Mr.Ananth
Krishnan merely referred to cited prior arts, as contended by Ms.Vindhya
Mani, the reference to cited prior arts in the impugned order cannot be
equated with the consideration of affidavits by way of evidence. This is
especially true with regard to obviousness analysis since such analysis is
required to be undertaken by donning the mantle of PSITA. When
affidavits are presented by persons professing to be skilled in the art, it is
incumbent on the Controller to consider such affidavits and thereafter
record reasons for accepting or rejecting the opinions expressed therein.
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16. As regards the conclusions on inventive step, it is pertinent to set
out the following paragraph of the impugned order with regard to the
comparison between prior arts D1 to D3 and the invention:
“In view of the above disclosure, it is submitted
that in an attempt to manufacture a “portable, compact
apparatus” with “Monochromatic light sources of low
power laser”, a person skilled in the art will necessarily
be taught to include the power source for such light
source having power of at least 1mW within the device
itself. Therefore, D3 inherently teaches a power supply
contained within the device housing without which there
cannot be any portability. The applicants have submitted
in their written statement para 60 that the image
acquision device is not mere sensor chip. Further in para
63 the applicants have submitted that D1 and D2 in
combination with D3 also fails to disclose all the features
of the alleged invention. In the absence of power supply,
as stated and accepted as inherently disclosed by the
opponents, the teaching of D1 and D2 in combination
with D3 fails to result in the alleged invention. ”
From the above extract, it follows that the contention with regard to D3 of
the opponent has been recorded. Thereafter, the contentions of the patent
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applicant with regard to D1 to D3 are recorded, including with regard to all
features of the invention not being disclosed in prior arts D1-D3. This is
followed by the conclusion that the teaching of D1 and D2 in combination
with D3 fails to result in the alleged invention. As contended by learned
counsel for the petitioner, it appears prima facie that no obviousness
analysis was undertaken and the Controller has, without independent
reasoning, proceeded to accept the contention of the patent applicant while
rejecting that of the opponent.
17. The conclusion with regard to prior art D7 also merits
reproduction. The said conclusion is as under:
“Further the applicants have submitted that in D7,
a lens is used which has to be integrated with the device
during manufacturing. In addition to this in para 75, the
applicants have stated that the requirement for a physical
link such as a serial bus between the handheld portion of
D7's device and the stationary portion of D7's device
means that the overall device of D7 is not portable.
With the above facts it is concluded that the
teachings of D1 and D2 in combination with D7 cannot
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result in the claim 1 of the alleged invention.
Documents D6 and D8-D9 are used for dependent
claims. When objection to claim 1 cannot be established
these arguments stands invalid. ”
Once again, as in the case of prior arts D1 to D3, the Controller has merely
accepted the contention of the patent applicant and rejected that of the
opponent without providing any reasons in support of such conclusions.
18. Nonetheless, while exercising discretionary jurisdiction under
Article 226 in respect of an order against which the statute does not provide
for an appeal, it is important to bear in mind that the writ petition should not
be resorted to as an appeal in disguise. Therefore, especially in the factual
context of the petitioner being a competitor in the same line of business as
the 4th respondent and, consequently, a person interested within the meaning
of Section 2(1)(t) of the Patents Act, the petitioner undoubtedly had an
alternative remedy by way of a post-grant opposition and continues to have
the alternative remedy of a petition for revocation under Section 64 of the
Patents Act. In these circumstances, it is necessary to strike the appropriate
balance.
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19. On the one hand, the petitioner has established that evidence by
way of affidavits was not considered in the impugned order and that the
impugned order records conclusions on certain issues without providing
reasons in support thereof. On the other, as indicated above, the petitioner
has an alternative remedy and the patent was granted to the 4th respondent
on 19.07.2023 with the priority date of 20.05.2008. In effect, only a little
over three years remain in the life of the patent. Hence, any interference
with the patent for reasons recorded in this order will cause grave prejudice
to the 4th respondent, and would not be justified in the facts and
circumstances. Consequently, a workable and balanced alternative warrants
consideration.
20. Within one year from the date of publication of grant, a notice of
opposition may be filed before the Controller by any person interested under
Section 25(2) of the Patents Act. In the present case, the grant was on
19.07.2023. Therefore, the one year period expired on 18.07.2024. Much
prior thereto, in August 2023, this writ petition was filed. If the time taken
in prosecuting this writ petition were to be excluded, the petitioner would be
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in a position to lodge a notice of opposition. In my view, this approach
strikes the appropriate balance on a holistic consideration of the facts and
circumstances. One final issue remains.
21. When the writ petition was listed for hearing on 30.08.2023, after
concluding that the petitioner had made out a prima facie case, in relevant
part, it was held as under:
“3. On examining the impugned order, I find that a
prima facie case is made out. By taking into account the
fact that both the petitioner and the fourth respondent
carry on similar business and are competitors in the
market place, there will be an interim order restraining
the fourth respondent from prosecuting the petitioner on
the basis of Patent No.439474 provided that the petitioner
uses devices and methods for fluorescence based imaging
and monitoring based on its patent IN323440. This order
shall operate until the next date of hearing.”
Learned counsel for the petitioner submitted that the petitioner should be
provided the benefit of the above interim order in case the Court is inclined
to decline to set aside the grant and instead relegate the petitioner to a
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post-grant opposition. Learned senior counsel for the 4th respondent
opposed this request by submitting that it would tantamount to granting an
anti-suit injunction in favour of the petitioner. He further submits that the 4th
respondent would put the petitioner on prior notice if it intends to sue the
petitioner for infringement.
22. In the interim order extracted above, it was noticed that the
petitioner had obtained a grant in patent IN323440, and the interim order
was restricted to actions for infringement on the basis of patent no.439474
in a situation wherein the petitioner works the patent granted under
IN323440. One of the grounds on which this petition has been prosecuted is
the wide amplitude of the grant. In the specific factual context of the
petitioner filing a pre-grant opposition, challenging the order passed therein
by way of this writ petition and the above interim order of this Court having
continued in force from 30.08.2023 till date, I find merit in the request for
continuation of this interim order until disposal of the post-grant opposition.
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23. For reasons aforesaid, W.P.(IPD)No.23 of 2023 is disposed of on
the following terms:
(i) The petitioner is permitted to lodge a post-grant opposition within
30 days from the date of receipt of a copy of this order.
(ii) If the post-grant opposition is received within the said time limit,
the Patent Office is directed to receive and dispose of the said post-grant
opposition on merits and in accordance with law.
(iii) The interim order issued on 30.08.2023 shall continue in
operation until disposal of the post-grant opposition. Thereafter, such order
shall cease to operate and shall abide by the outcome of the post-grant
proceedings before the Patent Office.
(iv) The continuation of the interim order is also subject to the
outcome of opposition proceedings relating to IN323440. For the avoidance
of doubt, it is clarified that if the opposition were to be allowed, the
petitioner will no longer be entitled to the benefit of the interim order.
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(v) There will be no order as to costs.
(vi) Consequently, connected miscellaneous petitions are closed.
25.03.2025
Index : Yes / No
Internet : Yes / No
Neutral Citation: Yes / No
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To
1. Union of India,
Representation by its Secretary, Ministry of Finance,
Department of Revenue, New Delhi.
2. Office of Controller General of
Patents, Designs and Trademarks,
Boudhik Sampada Bhawan, S.M. Road,
Antop Hill, Mumbai 400 037.
3. Office of the Deputy Controller of Patents,
and Designs, Patent Office,
Intellectual Property Office Building,
G.S.T. Road, Guindy, Chennai - 600 032.
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SENTHILKUMAR RAMAMOORTHY,J
kj
and W.M.P.(IPD)Nos.5 & 7 of 2023
25.03.2025
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