Tag Archives: infringement

Exide Industries Limited vs. Exide Corporation, U.S.A. & Ors.

The case Exide India v Exide US brings into effect the perplexing issue of Trade Mark law. The dispute dates back to 1997 when the US based Company ‘Exide Technologies’ entered the Indian market post Liberalisation, where Indian company ‘Exide Industries’ was already present over the decades in the local market selling automobile batteries under the trademark “EXIDE”. As soon as the US based company started its operation in India, Indian company “Exide Industries” filed a suit for infringement of trademark in Delhi High Court. After a significantly long and much converse legal conflict, the Court in 2012 restrained Exide Technologies from using “Exide” trademark in India. Exide Technologies further filed an appeal to Division Bench against the judgement of 2012, which was though dismissed the Division Bench held that there was neither infringement nor passing off done by Exide Technologies as both the commercial ventures were genuine users of the mark. Further to this decision, Exide Industries filed an appeal before the Hon’ble Supreme Court, which was disposed off by the court, as the parties to the dispute opted for an out of court settlement. The foremost dispute of the case was as to who is the real owner of the mark EXIDE.

The case is important as it includes the aspect of prior-use of identical trademark by two commercial entities and its legitimate ownership. The case involves a significant concept of trademark law according to which the prior use and adoption of trademark show distinctiveness of the trademark on account of sale of the goods in market which makes the seller, owner of the trademark. The Delhi High Court single judge held that the trans-border use of the trademark by the registered owner of a mark in a particular jurisdiction does not make him the owner in another jurisdiction where the similar mark is in simultaneous use by other local registered proprietors with proven prior use of that trademark. But subsequently the Division Bench declared the judgement to be impugned and thus held that the trans-national use of the trademark is one of the significant aspects to look for the ownership of the trademark and also the goodwill of the trademark continues to be with the assignor of the trademark even if it is assigned to some other company for use in another jurisdiction.

Case background:

M/s. Electric Storage Battery Company (ESBC) was incorporated in USA in 1888 and subsequently was granted the trademark ‘EXIDE’ in USA. It incorporated a subsidiary company in UK in 1891 named as M/s. Chloride Electric Storage Co. Ltd. (CESCO) which was permitted to use the trademark as it was a subsidiary of the parent US Company. Later, CESCO was also granted registration of trademark ‘EXIDE’ in UK. In 1947, following an order of a US District Court, ESBC and CESCO broke connection but CESCO continued to have right to use trademark ‘EXIDE’ pursuant to an agreement between the two. CESCO started selling batteries under the name ‘EXIDE’ in India and subsequently, in 1942 it was granted registration of the trademark ‘EXIDE’ even in India. CESCO is the parent company of the present plaintiff company to which the trademark was transferred. In 1978, by executing a deed of assignment, trademark ‘EXIDE’ was assigned to the present plaintiff company. Thereafter, the plaintiff company applied for transfer of registration of trademarks in its favour which was also granted. Therefore, it was selling batteries under the name ‘EXIDE’ for quite a long time in India.

After liberalisation, when US company Exide Technologies started selling batteries under the name ‘EXIDE’ in India, The Indian Company brought a suit for infringement and passing off against it which became a long drawn battle.The ownership of the trademark EXIDE was the primary issue in this case. The Indian Company Exide Industries claimed ownership on two grounds:

  • It was the registered owner of the trademark in India. This ownership was transferred from the transferor-company.
  • It was the prior user of the trademark in India and thus it acquired the ownership of the trademark ‘EXIDE’ in India.

Similarly the US based company, Exide Technologies claimed the ownership on two grounds:

  • It is the parent company (US based ESBC) of the former transferor-company (UK based CESCO) which owned the trademark ‘EXIDE’ and thus only Exide Technologies have the exclusive right of the ownership of the trademark ‘EXIDE’ even in India.
  • The trademark ‘EXIDE’ is registered in its name in about 130 countries and thus it is the worldwide owner of the trademark. As the company has a transnational existence, it is the real owner of the trademark ‘EXIDE’ even in India.

In the present case, the concept of prior use was applied, which implied that the plaintiff company was using the trademark by selling batteries under the name ‘EXIDE’ in India. The defendant claimed that it was the owner of the trademark in India as well because it was the parent company of the transferor-company from which the plaintiff acquired the trademark ‘EXIDE’ and the defendant pleaded that it had not abandoned its right by not using the trademark in India and instead didn’t use the trademark in India for long period of time because of some ‘special circumstances’. The court did not accept the Defendant’s plea as it failed to show any ‘special circumstances’ for not using the mark over such sufficiently long period of time in India. The result was that the court accepted the fact that the transferor-company was manufacturing batteries under the name ‘EXIDE’ in India from around 1960 from which the plaintiff company got the trademark assigned. Thus automatically, as far as India is concerned, the plaintiff and their predecessors are the prior user of the trademark ‘EXIDE’.

Judgement:

The Delhi High Court in 2012 through Valmiki Mehta, J. restrained Exide US from using the Exide mark in India and held the plaintiff as the legitimate user and owner of the mark in India due to its prior use by plaintiff. Both, infringement and passing off by US Company Exide Technologies were confirmed by the court. The Defendant’s plea of non-use of trademark in India due to special circumstances was also rejected as Court observed that the Defendant failed to establish any special circumstances.

However, the case came up as an appeal to the Division Bench of Delhi High Court which considered both the issues, the prior use of the trademark by Exide Industries and whether Exide Technologies is liable for the infringement and passing off. Relying on the landmark Supreme Court judgement like Cadila Healthcare, Dyechem v Cadbury and Durga Das Sharma v Navratan Pharmaceutical laboratories, the court inferred that passing off and infringement are both different concepts wherein, an impression of deception or confusion relating to the manufacture or origin of the goods is created in the minds of the buyers. Court observed that the trademark ‘Exide’ used by both the parties is identical, and both were genuine users of the mark. The judgement of the court was quite inventive and only one of its kind wherein the court outlined that US based Company was kept out of the Indian market due to trade restrictions but however on record of evidence Exide Batteries manufactured by Exide US was substantially known in India as well. Another point that the Court illustrated was that though, through an assignment deed, the mark was assigned to Exide India, yet the goodwill in the mark was retained by Exide US because the agreement did not specifically transfer the goodwill. Thus, the transnational reputation was highlighted and the court allowed Exide US to be in possession of the goodwill of the trademark ‘EXIDE’ despite of transfer of rights of ownership of the trademark. At the end, the court confirmed that there was no circumstance of passing off or infringement by the Exide US as it had legitimate rights to the mark. The court termed the use of the mark by Exide Technologies as “bona fide and legitimately concurrent”. Moreover, the counterclaim against Exide India was not maintainable since they were the registered owners of the mark in India.

The order of the division bench was further stayed by the Supreme Court after an appeal was filed by Exide Industries. The apex court restrained the Exide Technologies (defendant) from using the mark until the final adjudication of the matter but the parties before the decision of the court brought about an out of court settlement.

Present scenario and analysis:

In the event of widespread reputation through immense technology (internet, websites), globalisation and restructuring of Indian market, Exide case comes as an exception and as a tenet that considers territorial character of Trademark above trans-border reputation. The Delhi High Court judgement of 2012 clearly delineated that the territorial prior use of the trademark by a registered user in one jurisdiction weighed more than the worldwide reputation of the trademark used by another registered user in other jurisdictions. The case was twirled when the Division Bench restored the rights to the mark to both competing proprietors in a way. In this case the true scope and effect of concurrent use of an identical trademark for similar products in different jurisdictions were brought into light. Both concurrent users of the identical trademark in different jurisdictions were held to be the legitimate users in their respective jurisdictions. The allowed of the retained goodwill for substantiating bona fide claim to the mark was an exclusive and unique approach.

However, out of the court settlement by the parties clearly marked an end to the hopeful jurisprudence in cases of use of identical trademark by different commercial proprietors in different jurisdictions. The parties mutually agreed subject to certain terms and conditions to fully and finally settle all disputes and their rights and obligations with respect to the mark in the way set out in the agreement. As a result of the settlement, the Supreme Court disposed off the case without a proper jurisprudence on the issue.

Source:

[1]   MANU/DE/4642/2012

Author: Ms. Pratistha Sinha, Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at anirudh@khuranaandkhurana.com.

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Google AdWords Giving a Good Wallop to Trademark Law

Introduction

In this era of globalization, we use Internet on a regular basis in our daily lives. People are continuously trying to gain more profits and for this they sometimes adopt illegal practices for promotion of their goods and services. These practices include unauthorized use of a registered name or mark owned by their competitor. This misuse leads to infringement of rights of legitimate owner of the name or mark. A specific kind of software is generally used by search engines, called spider or crawler to gather information of web pages available on the Internet. In order to attract customers towards their websites, owners are continuously making use of “Google AdWords”, “Meta-Tags”, “Hyper- Linking”, “Deep- Linking”, etc.

The present article outlines relation between “Use of Google AdWords” and “Trademark Infringement”. Basically, Google AdWords are keywords to search for a particular category of goods and/or services required by a person. When a person types a particular keyword on a search engine, the search engine matches the keyword entered by the person with the Google AdWords of various web-pages, and accordingly displays the most prominent results. By using the competitors name and/or mark with various permutations and combinations, search engine results are effortlessly manipulated to lure the visitors to one’s website. Google AdWords are used to set the web links in a prioritized manner based on the queries of user. They act as a code for providing information about the web page, which helps in diverting Internet traffic to their websites, causing considerable commercial loss to the legitimate registered owner.

 

What is a Google Ad-Word?

Google AdWord is a successful and client capturing advertisement option that is also a misleading source with respect to the Trade Mark rights of a trademark owner. Google AdWords are basically keywords that are used by an advertiser of certain goods and services to advertise their products, wherein when a specified keyword is searched for, the search engine shows the advertisements/websites of various advertisers. Hence, in this way, Google AdWords are used to divert Internet traffic towards a particular advertisement/website. The keywords used, generally denote someone’s area of business. It is an intelligent system that highlights ads/website depending on the keyword search. Its use is very simple and Google is paid by the website owner for each and every click on their website. AdWords is a paid referencing service started by Google for business promotion.

 

Misuse of Google AdWords leads to Trade Mark Infringement

This is a very important question as to how the use of Google AdWords may lead to Trade Mark infringement. If a person selects any word to be used as an AdWord, which is either similar or identical to a third party’s trademark, does the person infringe the rights of the trademark owner?  It was held in the very famous Consim- Google AdWords controversy[1] that if these AdWords are used by the person which is similar or identical to the third party’s trademark, then this amount to diluting/tarnishing the goodwill or reputation of the third party as this creates confusion in the mind of the customers of the person whose trademark is allegedly infringed. Therefore, this should not be allowed and becomes a case of trademark infringement.

Let us understand this with the help of an illustration: Suppose ‘A’ is the registered trademark owner of certain brand. Now ‘B’ is using AdWords which is in competition to the business owned by ‘A’, and uses Trade Mark of A as one of the paid keywords in the Google Adwords. ‘B’ is therefore diverting the internet traffic towards his own advertisement by using Trade Mark of A such that when users search for A, advertisement of B would also be shown, thereby causing damage to the goodwill/reputation owned by ‘A’, which is not allowed under Trade Marks Law. Hence, selection of Google AdWords becomes very relevant in the eyes of Trademark Law.

A case, Matrix Cellular (International) Services Limited v TSIM Communication Services Private Limitedand IP Attorneys, which represents the plaintiff in the Delhi High Court, wherein the Plaintiff, Matrix Cellular (International) Services Limited, is the proprietor/ owner of the trademark MATRIX since 1995 in respect of ‘International roaming Sim cards’. The defendant is accused of dishonestly using plaintiff’s trade mark i.e. MATRIX as Google AdWords to divert the users to their website by creating a confusion in their minds. The Court recognized that the defendant has engaged in dishonestly using Plaintiff’s trademark to gain profits and the same has resulted in infringement of Plaintiff’s trademark, as a result of which the Court was pleased to grant an interim injunction in the favor of the Plaintiff.

 

Exemplary Landmark Cases

  1. Consim Info Pvt. Ltd. vs. Google India Pvt. Ltd. & Ors. [2]

In this case, Appellant was a private limited company that provided online matrimonial services. In the course of its business, it had adopted several trademarks including Bharat Matrimony, Tamil Matrimony, Telugu Matrimony, Assamese Matrimony, etc. It had registered several domain names with these word marks. The respondents, Google India and its parent company were in the business of offering an advertisement program called AdWords. It generates ‘Sponsored Links’ on the right-hand side of any organic search results produced by Google, closely corresponding to the term searched for.

Google allows the Key Word to appear as a part of the advertisement as well. Therefore, the more the term is searched for, more the chances that it is a heavily demanded Key Word. The competitors would thus bid for the Key Words of other players in their business to catch the attention of user and thereby divert the business meant for such other players. The appellant filed a suit for permanent injunction restraining Google from infringing their trademarks by using them in the AdWords Program and Key Word suggestion Tool. It also restricted Google from passing off their services using the appellant’s trademarks and their closely resembling variants. The issue in question was whether such use of appellant’s trademark by Google’s Ad program amounted to trademark infringement.

Madras High Court thus concluded that the appellant had made a prima facie case and the balance of convenience lied in its favor and thus eventually granted an injunction.

  1. Rescuecom Corp. v. Google Inc. [3]

This is a very interesting case where the main question before the court was whether the use of trademark as keywords amount to Trademark infringement. The US Court of Appeal held that the use of trademark as keywords can be equated to the use of trademark as Meta –Tags. Therefore, Google was held liable for using the trademarked words in its Keyword Suggestion Tool. [4]

Conclusion

Thus, summarizing, use of Trademarks as a Google AdWords can be allowed if it comes under fair use, otherwise the same is restricted. Google is everywhere and it is estimated that approximately 80-85% of the world’s population uses it. If a person wants to mislead someone from the actual website of the proprietor to the impugned one it is the best platform available. Thus, customers are lured and are often misguided by the person violating by increasing the traffic and demand towards his/their website. The use of such Google AdWords is entirely dependent upon the facts and circumstances of case. Google AdWords being special keywords are embedded in web-pages and are often used by search engines in deciding the relevant websites to show in a search result. Therefore, the unfair and illegal use of the Google AdWords with respect to the Trade Marks leads to the Trademark infringement and irreparable damage to the legitimate owner. Choice of keywords becomes very important in this regard otherwise it would lead to infringement of other person’s rights. The concept of Google AdWords in relation to Intellectual Property should be understood and their misuse should be prevented.

About the Author: Ms. Yogita Agrawal, Legal Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

 

References

  1. Consim Info Pvt. Ltd. vs. Google India Pvt. Ltd. & Ors. 2013 54 PTC 578 (Mad).
  2. 2013 54 PTC 578 (Mad).
  3. 562 F.3d 123 (2nd Cir. 2009).
  4. Mattel Inc. and Others vs. Jayant Agarwalla and Others 2008 (38) PTC 416; Samsung Electronics Company Limited & Anr. vs. Kapil Wadhwa & Ors. C.S. (OS) No.1155/2011.

Teva held responsible for Induced Infringement of Eli Lilly’s Blockbuster drug ALITMA

In Teva Parenteral Medicines, Inc.; APP Pharmaceuticals LLC; Pliva Hrvatska D.O.O.; Teva Pharmaceuticals USA, Inc.; and Barr Laboratories, Inc. (hereinafter referred to be as Defendants/Appellants/Teva) Vs. Eli Lilly & Co. (hereinafter referred to as Plaintiff/Appelle/Eli Lilly) decided by United States Court of Appeals for the Federal Circuit (CAFC) on January 12, 2017, Plaintiff had filed Hatch Waxman suit against defendant to prevent them from launching generic version of the lung cancer drug whose rights are reserved with the plaintiff. The decision from CAFC came after an appeal from the United States District Court for the Southern District of Indiana in No. 1:10-cv-01376-TWPDKL, Judge Tanya Walton Pratt.

Eli Lilly owns a patent US 7772209 (hereinafter referred to as US‘209) issued in 2010, relating to method of treatment administering the chemotherapy drug pemetrexed disodium (hereinafter referred to as “pemetrexed”) (used to treat certain types of lung cancer and mesothelioma) after pretreatment with two common vitamins—folic acid and vitamin B12 (reduce the toxicity of pemetrexed in patients). Eli Lilly markets pemetrexed under the brand name ALIMTA®.

In 2008-2009, Defendants notified Eli Lilly that they had submitted ANDA seeking approval to market generic version of ALIMTA®. After issuance of US’209 patent, Teva sent additional notice that they had filed Para IV certifications, declaring that US’209 patent was invalid, unenforceable, or would not be infringed. Subsequent to which Eli Lilly alleged Teva of induced infringement. Eli Lilly asserted that Teva’s generic drug would be administered with folic acid and vitamin B12 pretreatments and thus will result in infringement of the 209 patent.

Eli Lilly asserted claims 9, 10 (dependent on claim 1), Independent claim 12, and its dependent claims 14, 15, 18, 19, and 21 of the US’209 patent at trial.

Independent claims 1 and 12 have been reproduced below for reference:

Claim 1:

A method of administering pemetrexed disodium to a patient in need thereof comprising administering an effective amount of folic acid and an effective amount of a methylmalonic acid lowering agent followed by administering an effective amount of pemetrexed disodium, wherein the methylmalonic acid lowering agent is selected from the group consisting of vitamin B12, hydroxycobalamin, cyano-10-chlorocobalamin, aquocobalamin perchlorate, aquo-10-cobalamin perchlorate, azidocobalamin, cobalamin, cyanocobalamin, or chlorocobalamin.

Claim 12:

An improved method for administering pemetrexed disodium to a patient in need of chemotherapeutic treatment, wherein the improvement comprises:

  1. a) administration of between about 350 μg and about 1000 μg of folic acid prior to the first administration of pemetrexed disodium;
  2. b) administration of about 500 μg to about 1500 μg of vitamin B12, prior to the first administration of pemetrexed disodium; and
  3. c) administration of pemetrexed disodium.

It is important to note that current case involves issue of induced infringement i.e. a type of indirect infringement that may be committed under section 271 (b) (dealing with infringement of Patents).

In June 2013, Defendants conditionally conceded induced infringement under then-current law set forth in Akamai Technologies, Inc. v. Limelight Networks, Inc. (Akamai II) which at that time was the subject of a petition to the Supreme Court for a writ of certiorari. The parties’ stipulation included a provision reserving Defendants’ right to litigate infringement if the Supreme Court reversed or vacated Akamai II.

District court had rejected contentions of the defendant that Patent was invalid for obviousness or obviousness-type double patenting and also due to indefiniteness of the term vitamin B12.

Defendants filed an appeal on invalidity. While that appeal was pending, the Supreme Court reversed Akamai II, holding that liability for inducement cannot be found without direct infringement, and remanding for CAFC court to possibly reconsider the standards for direct infringement. In view of that development, the parties in this case filed a joint motion to remand the matter to the district court for the limited purpose of litigating infringement. CAFC granted the motion.

The district court held a second bench trial in May 2015 and concluded in a decision issued on August 25, 2015 that Defendants would induce infringement of the US’209 patent. This was after considering the effect of Akamai V decision, which had broadened the circumstances in which others’ acts may be attributed to a single actor to support direct infringement liability in cases of divided infringement.

Defendants appealed.

Below given factors are taken into consideration while deciding cases of induced infringement:

  • Whoever actively induces infringement of a patent shall be liable as an

Infringer;

  • There cannot be indirect infringement without direct infringement;
  • Patentee needs to prove alleged infringer knew or should have known his actions would induce actual infringements; and
  • Standard of proof required by Patentee to claim relief under induced infringement is ‘preponderance of the evidence’.

It was agreed by parties that Defendants’ proposed product labeling would be materially the same as the ALIMTA® product labeling and consists of two documents: the Physician Prescribing Information and the Patient Information. District court found that both the documents included instructions regarding the administration of folic acid—the step that the district court found would be performed by patients but attributable to physicians.

According to Akamai V, where no single actor performs all steps of a method claim, direct infringement only occurs if the acts of one are attributable to the other such that a single entity is responsible for the infringement. The performance of method steps is attributable to a single entity in two types of circumstances:

  • when that entity “directs or controls” others’ performance, or

 

  • when the actors “form a joint enterprise.”

In Akamai V, CAFC had held that directing or controlling others’ performance includes circumstances in which an actor:

(1) “conditions participation in an activity or receipt of a benefit” upon others’ performance of one or more steps of a patented method, and

(2) “establishes the manner or timing of that performance.”

District court found taking folic acid in the manner recited by the asserted claims is a critical and necessary step to reduce potentially life threatening toxicities caused by the Pemetrexed amounts to receive the benefit of the patented method.

Regarding first of the two pronged test, the court found, based on the product labeling, that taking folic acid in the manner specified is a condition of the patient’s participation in the Pemetrexed treatment. Regarding the second prong, the court found that physicians would prescribe an exact dose of folic acid and direct that it be ingested daily. Hence court held all steps of the asserted claims would be attributable to physicians.

Court further observed that the mere existence of direct infringement by physicians, while necessary to find liability for induced infringement, is not sufficient for inducement but there has to be also specific intent and action to induce infringement. Court went on to find intent on the part of physician for the inducement and held that there was no error in district court’s decision. Some important observations of court have been mentioned below.

CAFC made two important observations as below:

  • The intent for inducement must be with respect to the actions of the underlying direct infringer, here physicians.

 

  • Second, it is not required to show evidence regarding the general prevalence of the induced activity. When the alleged inducement relies on a drug label’s instructions, the question is not just whether those instructions describe the infringing mode,..but whether the instructions teach an infringing use such that we are willing to infer from those instructions an affirmative intent to infringe the patent. Court further observed that the label must encourage, recommend, or promote infringement and it is irrelevant that some users may ignore the warnings in the proposed label.

Court went on to observe a label that instructed users to follow the instructions in an infringing manner was sufficient even though some users would not follow the instructions, but vague instructions that require one to look outside the label to understand the alleged implicit encouragement do not, without more, induce infringement.

On the issue of invalidity on the indefiniteness of the term “vitamin B12”, CAFC hold that a person of ordinary skill in the art would understand the scope of the claim term “vitamin B12” with reasonable certainty. Applying Nautilus (outcome of this decision) in this case did not lead CAFC to a different result from the district court’s conclusion on the question of indefiniteness.

Regarding issue of invalidity due to obviousness, CAFC was not convinced that the district court committed clear error in concluding that Defendants failed to carry their burden of proving that it would have been obvious to a person of ordinary skill to use vitamin B12 pretreatment to reduce Pemetrexed toxicities.

Thus CAFC affirmed district court decision.

About the Author :  Ms. Rashmi Goswami, WOS-C at TIFAC, intern at Khurana and Khurana, Advocates and IP Attorneys and can be reached at swapnil@khuranaandkhurana.com

News Snippet: Novartis sues Cipla for infringement of patents covering “Onbrez”

In a latest update, Novartis has sued Cipla for infringing its patents on “Onbrez” (Indacaterol) after Cipla lunched its generic version for Indacaterol in October claiming “urgent unmet need” for the drug in India.

Earlier, as we have reported here, Cipla approached Govt. of India to exercise its statutory powers to revoke the five patents covering Indacaterol granted to Novartis, which is yet to be decided.

Novartis requested high court to permanently restrain Cipla from manufacturing Indacaterol in any form and selling it in India. It also sought damages for infringing the five Indian patents covering Onbrez.. In reply, Cipla contended that “Onbrez” sold by Novartis is too expensive and is not easily available to the public. Delhi High Court has reserved its verdict on January 9 after hearing detailed arguments by both parties.

Practice of Patent Asserting Entities: Boon or Bane: Global Innovations

Introduction

Patent troll relates to a person or company that enforces its patents against one or more alleged infringers in an opportunistic and unduly aggressive manner, often with no intention to manufacture or market the patented invention. Various terms such as patent trolls, patent monetization companies, or patent assertion entities are used for such entities; however, irrespective of term used, it solely talks about companies that conduct very little research to create new ideas and produces no products. Instead, they hold patents in which they were not involved at any level: ranging from designing, manufacturing or process associated with that patent. Their main aim is to sue similar patent holder firms or to extract license payments under the threat of lawsuits or actual litigation to enforce their demands.

A more polite and neutral name used for them is “Non-Practicing Entities” (NPE’s). Non-practicing entities include legitimate institutions such as start-ups, technology transfer agencies, universities, research organizations inter alia.

Modus Operandi of patent trolls

Patent trolls usually gather together large portfolios of patents, which they purchase from companies that are going out of business, from firms that have developed technology that they don’t intend to pursue on a particular technology, or from individuals who are lacking funds to develop their inventions or ideas. Further, the trolls look for successful products that use the technology covered by their patents and demand a licensing fee. Because patent suits are expensive to defend, the target company is most often willing to settle out of court.

Trolls accumulate patents related to a target company. By purchasing many patents focused on one area, they are able to bring up so many occasions of possible infringement which further makes it harder and more expensive for the target company to defend the suit. They also sue multiple defendants so that the legal cost per defendant is reduced but makes for a large overall potential payback.

On the other hand, as a matter of practice, lawyers are paid on a contingency basis – they are only paid if they win the case. That reduces the cost further of the  trolls. On the other hand cost for the accused infringer is sky-high and if they try to fight the case, there is no quick way to end the litigation and achieve success in the litigation.

The patent trolls may also claim a share in total revenue from the product although patents may cover only a small aspect of the technology. The award can amount to millions for a successful product.

From various sources, it is believed that 97 percent of infringement suits in U.S. are settled before trial rather than risk judgement irrespective of the merits of the case and also the cost of patent litigation (bringing or defending a patent lawsuit is expensive, with legal costs and lawyers’ fees reaching into the millions of dollars) works to patent trolls advantage, too. Further adding to the list of advantages for trolls, if a defendant company loses a suit, it may be liable for treble damages in a case of wilful infringement.

The result is a situation where the accused infringer faces so much of a burden of fighting the court case that it becomes appealing to pay some lesser amount to make the litigation go away.

Patent Trolling in India

The practice of patent trolling was prevalent and practiced in India in the Information Technology and Communications sector till 2005 prior to passage and enactment of the Patents (Amendment) Act, 2005 after which there was steep decline in trolling activities.  The reason for this decline is nothing but the inclusion in the 2005 Act of a list of non-patentable subject matter which includes Software domain which is considered to be most significant domain involved in patent trolling among others, imposition of stringent deadlines for pre-grant opposition, introduction of post-grant opposition, as well as the introduction of a variety of other provisions such as compulsory licensing.

Pertinently patent law in India do not aims to prohibit the existence of patent trolls but threatens its existence.  For instance, Indian patent law makes it mandatory that a (granted) patent be worked or used in India. However otherwise, if a patent is not used in the territory of India within a period of 3 years from the grant of patent, compulsory licensing might be invoked.  Also, the Indian Patents Act makes it mandatory to file statement of working of a patent at the end of each financial year. And if the patent holders fail to file such a statement, he may be liable for a fine and/or imprisonment.  Hence in India, patent trolling does not pose any major threat to any entity seeking opportunity to enter the Indian market in view of the amendments to the laws which fairly controls the patent troll activity in India.

Conclusion:

While patent trolls are a major threat in many countries they are not a viable option to operate in India In view of provisions incorporated in Indian Patent Laws vide Patents (Amendment) Act, 2005.  It can be observed that while the other countries are plagued with patent troll activities, the Indian system strived fairly to control the problem of patent trolls.  May be US and other developed countries need to take a leaf out of Indian Patent Laws to curb the menace of patent trolls instead of criticising IPR regime.

About the Author: Mr Sitanshu Singh, Patent Associate, Khurana & Khurana, Advocates and IP Attorneys and can be reached at: sitanshu@khuranaandkhurana.com

Rockstar Consortium US LP et. al.v. Google Inc

Gopikrishnan M, an intern at Khurana and Khurana, Advocates and IP Attorneys, looks at Google Inc. been accused of infringing technology related to its searching technology itself.

Yet another high-tech and high-profile patent war is on, this one involving a combined attack on the search giant’s core technology. Google is being sued for direct patent infringement in a suit filed on 31st of October, 2013 in the US District Court in Texas. Plaintiffs, Rockstar Consortium and NetStar Technologies (jointly owned by Apple, RIM/Blackberry, Ericsson, Microsoft and Sony) have accused Google Inc. of infringing a patent that is related to web search advertisement. Google has been sued in the past for bypassing user privacy, but perhaps this is the first time the search giant has been accused of infringing any technology related to its searching technology itself. Google is considered to be the pioneer in web search technology and leads the searching industry by a very high margin (as of 2013, Google owns around 80% of the web search market share).

Background of Technology

Nortel Networks Corporation, a Canadian company, holds a granted patent US6098065, titled “Associative Search Engine”, which accepts user queries and produces search results in response. The results also contain advertisements that are related to the entered search query. The following figure in the patent illustrates how their algorithm works, providing search results as well as user targeted advertisements.

Gopi

Image retrieved from the Nortel Patent

Above figure illustrates different entities that constitute the patented service. A brief understanding of the patented method is provided below:

In operation, an end user enters a query into a terminal computer, which is connected to a server. The server in turn is connected to a router which connects the computer to the Internet. Search engine can be configured to process three databases, i.e. Contextual Database, Product Database, and User Profile Database. While the Database Search Engine processes search results for the entered query, an associative search Engine searches the product (advertisement) database in relation with the search query based on the user database, which has information as to the past preferences of the user. As a result, the database search engine produces results in accordance with the user query and the associative search engine enhances it by choosing between the general search results and search results based on what the user actually wants.It also generates user targeted advertisements which will be displayed along with the search results.The search engine, in a way predicts what the user would want based on his past preferences.

In an example, consider a situation depicting practical significance of the patented method. A law student uses a search engine functioning with the inventive method being spoken about. User database would have information relating to the student including his profile, preferences, interests, among other like details. When the student searches for “Europe”, advertisements displayed would be something targeted at him, for example “Study in Europe – A career launcher website”. An investment banker, on the other hand may not get the same results when he searches for the same query.

First independent claim of US ‘065 reads as follows:

  1. A method of searching for desired information within a data network, comprising the steps of:

receiving, from a user, a search request including a search argument corresponding to the desired information;

searching, based upon the received search argument and user profile data, a database of information to generate a search result; and

providing the search results to the user

wherein searching the database includes correlating, as a function of a fuzzy logic algorithm, the received search argument and user profile data to particular information in the database, and providing the particular information as the search results.

Google uses very similar technology for placing ads. The popular Google service “Google AdWords” uses user based advertisement delivering tools like ‘Contextual Targeting’, ‘Topic Targeting’, ‘Interest Targeting’ and more of such tools whose concepts of working are very similar to the patented method.

More information about the same and how Google AdWords works can be found at Google’s AdWords web page.

Fight for the Nortel Patents and the Subsequent Law Suits

When the Canadian based Nortel Corporation went bankrupt, around 6000 of their patents were auctioned. Google tried to acquire all of the patents starting their bid from $900 million dollars eventually raising them up to $4.4 billion but failed. Rockstar acquired the patents for $4.5 billion.  This was followed by Google’s acquisition of Motorola for $12.5 Billion

Now Rockstar has filed an infringement suit against Google Inc. alleging that Google has infringed their family of patents relating to ‘associative search’. They have alleged that Google already knew about the infringement and took part in the auction knowing the same.

An extract from the plaint reads as follows

Google has infringed and continues to infringe the ‘065 patent by its manufacture, use, sale, importation, and/or offer for sale of systems, methods, products, and processes for matching search terms with relevant advertising and/or information based on those search terms and other user data, including but not limited to Google’s process of receiving search requests from a user, using its search engine to generate search results based at least in part on the search request, selecting  —through Google’s AdWords and/or any other products, methods, systems, or services Google uses to store and choose relevant advertising — a relevant advertisement based on the search request and/or user data, and providing the search results together with the particular advertisement to the user; and additionally Google’s systems, methods,  products, processes of using other user  data aside from the search request to help select the search result and/or advertisement; and additionally and alternatively its contributing to and inducement of others to manufacture, use, sell, import, and/or offer for sale infringing systems, methods, products, and processes in the manners described above. Google is liable for its infringement of the ‘065 patent pursuant to 35 U.S.C. § 271

Accusation Made

Plaintiffs here have accused Google of infringing their patents submitting that they own the IP and technology used by Google to sell advertisements, which overlaps with their ‘065 patent and hence according to 35 U.S.C. § 271, they are liable of patent infringement. The plaintiffs Rockstar consortium have filed suits against Google for infringing 7 patents all relating to the same family. The other patents are US 7,236,9697,69,2457,672,9707,895,1787,895,183 and 7,933,883. Moreover they have specifically mentioned, that Google despite losing an attempt to acquire the patent-in-suit(i.e. all the above 7 patents) at the auction, infringed and continues to infringe the patents-in-suit. The plaintiffs have accused Google of willful infringement and have asked for enhanced damages of past and future loses under 35 U.S.C. § 284 and attorney charges for prosecution under 35 U.S.C. § 285.

A general non-technical reading into Google’s technology shows that its concept is similar to ‘065 patent. But the page ranking and ad ranking algorithms used by them are very different and way more complex and efficient. Google’s desperate effort to acquire Nortel’s patents and their subsequent accession of Motorola Mobility shows how critical it was for them to have access to the technology. Plaintiffs have pointed out the same in their plaint, leading to a situation wherein Google might have a tough time defending themselves in this face off. Another interesting development is the introduction of Patent Litigation Integrity Act by the US Congress (an anti trolling law which is heavily backed by Google), which protects active inventors and innovators against patent trolls. Google may even defend the case using the provisions of this act. With all these developments in progress, it will be interesting to see how this lawsuit turns out.

An insight on the legal implications of BYOD

Bring Your Own Device (BYOD) is a scheme wherein employees are allowed to bring their own devices like mobiles, laptops, tabs and utilize them in the workplace for work purposes. Some employers themselves fund the software to their employees, meanwhile some prefer to simply grant permission for their employees to bring their technology at their own expense.

This is beneficial to the employee since it would be evident that he would be comfortable using his own devices, adding to the fact that he can work from home on his own gadget at his own convenience. Sounds simple, doesn’t it?

Unfortunately, this scheme seems to have created numerous problems as far as employers i.e. companies are concerned. It is a herculean task for companies to keep a check on which device is being used and by whom and for how much time. If companies remain oblivious to this and let the employees have a free reign over the usage of their software, it can serve as a deterrent in the form of unending and expensive infringement litigations due to security breach and/or privacy and data protection interests. Hence, many companies are averse to BYOD since the risks outdo the benefits involved.

If you think about the intellectual property rights that can protect anything being used via the BYOD scheme, the utmost concern would be your copyrighted works. Anything that the user is enabled to see on screen, be it algorithms, source codes, object codes, software designs, databases, manuals, complete written specifications of the software, and so on, can be copyrighted. Now, the question stands as to the ownership of these copyrighted works.

Coming to the Indian scenario, under the Copyright Act, 1956, the ownership of the copyrighted work generally vests with the employer, unless there exists a contrary agreement between the employer-employee.  The question arises here is in case the employee uses his own Device to better the copyrighted works belonging to the employer, who would be the rightful owner of the intellectual property rights of the works? Further, an employee can engage in infringement activities simply by unlawfully copying and storing the copyrighted works on his personal device. Altering or deleting data can also invite severe repercussions for the employee.

Meanwhile if the employees are using unlicensed software for their work purposes, the employers can be held liable for infringement. The employer can be held vicariously liable unless guidelines are not written down to protect their interests.

Hence, companies need to implement guidelines that control the usage of BYOD devices and maintain regular checks of these devices to ensure there are no illegal activities taking place. Along with guidelines, password protection, encryptions, antivirus and wireless access policies can be implemented along with various other privacy policies in order to prevent legal misuse of softwares. The onus, in the end, remains on employees to be diligent while using their own gadgets in workplaces.

About the Author: Ms. Madhuri Iyer, Trade Mark Attorney at Khurana & Khurana and can be reached at: Madhuri@khuranaandkhurana.com

Follow us on Twitter: @KnKIPLaw.

Generic v. Branded patent battles in India foray into life management diseases too

Patent wars in India between the foreign innovator companies and the Indian generics now seem to be spreading over life-management diseases segment. Till now the patent infringement cases have revolved and are still revolving over drugs for life-threatening diseases such as HIV, cancer where the public interest has played an important factor in the adjudication of the cases. However a recentlaunch of a generic version of Merck’s anti-diabetic blockbuster drug Januvia by Glenmark has opened the gates to India’s its first such patent litigation case in Diabetes market.

Merck sued Glenmark for infringing over it their product patent on Sitagliptin (marketed as Januvia) on April 01st, 2013. Merck sought to obtain an interim injunction against Glenmark seeking to restrain Glenmark from launching its Generic products Zita (generic version of Januvia) and Zita met (generic version of Janumet, combination of sitagliptin+metmorphin). The Delhi High Court however refused to grant the relief to Merck by its decision of April 5th available over here.

The arguments made by Glenmark get the case to follow in a similar direction as Roche v. Cipla. In Roche v. Cipla, Cipla argued that their generic drug Tarceva is a polymorphic form B of Erlotinib Hydrocloride which the valid product patent of Roche does not claim. In addition, Cipla argued that Roche filed a separate Indian patent application on the polymorphic form B which was rejected U/S 3d proving that polymorphic form B is a separate invention not covered in the product patent, on basis of which Cipla was successful in proving non-infringement of the Roche’s patent at the Delhi High Court (the case is now pending at the Supreme Court).One point to be noted is that Cipla sold Tarceva at ~1/3rd of the price of Roche’s marketed drug and that the drug was an anti-cancer agent.

Coming to Merck v. Glenmark, the arguments by Glenmark flowed in the similar direction wherein Glenmark argued that:

  • Merck filed a separate application on Sitagliptin phosphate via 5948/DELNP/2005 which was rejected and affirmatively abandoned by Merck.
  • Merck had also obtained separate US and EP patents on Sitagliptin phosphate wherein Merck admitted that Sitagliptin Phosphate is a new discovery over the main product patent by describing the salt as “novel salt”. Further added that if Sitagliptin phosphate had been not a distinct product from sitagliptin, Merck would not have applied for or obtained a separate patent.
  • Merck suppresses the later Indian patent filing, rejection and abandonment of  5948/DELNP/2005 covering phosphate salt
  • Merck’s ‘816 patent is for Sitagliptin Hydrochloride only and not for Sitagliptin Phosphate
  • Glenmark’s counsel also placed reliance on Novartis Judgement saying “coverage in a patent cannot be permitted to go much beyond the disclosure made by the patentee and that the scope of patent cannot be permitted to be determined by the artful drafting of its claim by skilful lawyers instead of intrinsic worth of the invention”
  • On the basis of the Roche v Cipla judgment, it is further contended that “where the role of variant outweighs the patented claim, there can be no infringement”.

Glenmark, in its arguments, thus relied mainly on separate patent filing on Sitagliptin Phosphate and proving that Merck itself acknowledges that the two are separate inventions and that Glenmark’s selling of the Sitagliptin phosphate salt will not infringe the ‘816 patent.

Merck argued that:

Sitagliptin phosphate being a derivative of Sitagliptin, could not be granted an Indian patent U/S 3d and that the application was misconceived, which was rejected and later abandoned by Merck itself. Merck contended that there are separate patents in US, EP or other countries because there is no section 3d equivalent there. Merck’s counsel also, to allay any influence of the Novartis judgement, contended that there is no price difference in the product of the plaintiffs (Merck) and defendant (Glenmark) and that it cannot be said that the product of the defendant is considerably cheaper than that of the plaintiffs.

According to Judge,

“To my mind, if the infringing product are made with the same object in view which is attained by the patented article, then a minor variation does not mean that there is no infringement. Trifling and unessential variations are to be ignored. Conversely, a miniscule advancement could be recognized as an invention.”

The Judge further added that if it is proved that Sitagliptin phosphate has material effect on the ways Sitagliptin works, defendant would not infringe the plaintiffs patent.

The Judge highlighted that it was for Merck “to have made a case of Sitagliptin Phosphate being merely a new form of sitagliptin which does not result in the enhancement of the efficacy of sitagliptin”, instead Merck only pleaded that Sitagliptin phosphate is same as Sitagliptin which they cannot be prove in light of the separate filing of the phosphate patent.

The Judge therefore did not find Merck to have made case for grant of interim relief and accordingly has dismissed the application. But the court, of course, gave directions to Glenmark to maintain and file accounts of the manufacture and sales of the infringing products every quarter before the Court and to the counsel for the plaintiffs.

Conclusion

It would be interesting to see how this case unfolds during trial, especially it would be interesting to see how strongly the Roche v. Cipla case would act as precedent for this case.  There is a similarity of arguments on separate patent application filing and rejection of new form in both cases. There is a difference however in pricing issues and public interestin this case. In Merck v. Glenmark, Plaintiff’s drug (not an anti-cancer or anti-HIV) was already launched in India with 1/5th of the prices in USA with a current price difference between plaintiff’s and defendent product being ~30% only, unlike in Roche v. Cipla where the plaintiff’s drug was 3 times more expensive than the defendant’s product and was an anti-cancer agent.

Further in Roche v. Cipla, the original product patent did not disclose polymorphic forms A or B even generically. However, in Merck v Glenmark, ‘816 patentnot only discloses pharmaceutically acceptable salts but also mentions phosphoric acid as one of salt forms among a list of other salts. The Examples though disclose only HCl salt forms.

Wouldn’t the test of infringement involve “reading” a claim of the patent onto the potential infringer’s product, wherein if the claim’s elements are found in the product, said product will infringe. In this case, claim 1 in general and claim 19 specifically covers Sitagliptin and pharmaceutical acceptable salts thereof.And thepharmaceutically acceptable salts are defined in the description as:

The term “pharmaceutically acceptable salts” refers to salts prepared from pharmaceutically acceptable non-toxic bases or acids including inorganic or organic bases and inorganic or organic acids……………………….When the compound of the present invention is basic, salts may be prepared from pharmaceutically acceptable non-toxic acids, including inorganic and organic acids. Such acids include acetic, benzenesulfonic, benzoic, camphorsulfonic, citric, ethanesulfonic, fumaric, gluconic, glutamic, hydrobromic, hydrochloric, isethionic, lactic, maleic, malic, mandelic, methanesulfonic, mucic, nitric, pamoic, pantothenic, phosphoric, succinic, sulfuric, tartaric, p-toluenesulfonic acid, and the like. Particularly preferred are citric, hydrobromic, hydrochloric, maleic, phosphoric, sulfuric, fumaric, and tartaric acids  (emphasis added)

Shouldn’t Sitagliptin phosphate gets covered in the ‘816 patent especially due to the fact thatphosphoric acid is mentioned not only in just a laundry list,but is mentioned amongst “Particularly preferred” acids in addition to just 7 other acids?

Furthermore, shouldn’t manufacturing Sitagliptin Phosphate includemaking and using of Sitagliptin,and hence infringe upon ‘816 patent anyways? Shouldn’t Merck prove that manufacturing Sitagliptin Phosphate will infringe its ‘816 patent as the defendant cannot produce Sitagliptin Phosphate without producing Sitagliptin first and thus infringing the ‘816 patent.It might prove to be a better strategy for Merck rather than proving a point that Sitagliptin phosphate and Sitagliptin are same and are claimed in a single patent because filing a separate patent for the salt, arguing in US/EP prosecution that the salt is a novel one and a new discovery over the main patent may go against Merck keeping in view the Roche v. Cipla case, which the court is very likely to follow in this case.

It would be interesting to see how all these factors will be considered by the court in deciding whether Glenmark infringes or not.

About the Author: Ms. Meenakshi Khurana, Patent Attorney at Khurana & Khurana and can be reached at: Meenakshi@khuranaandkhurana.com

Follow us on Twitter: @KnKIPLaw .

Analysis of the case- Carlsberg India Pvt. Ltd vs Radico Khaitan Ltd. on 20 December, 2011

Mrinal Gour, an intern at Khurana and Khurana Advocates and IP Attorneys, analyses the case, Carlsberg India Pvt. Ltd vs Radico Khaitan Ltd. This was a landmark judgment with respect to registering a numeral as a trademark.

Sections involved: Section 29 of Trademark Act, 1999 which talks about infringement of registered trademarks. It states the scenarios where a registered trade mark is infringed by a person who is not the registered proprietor or he is using by way of permitted use. The non registered proprietor’s mark would be identical with or deceptively similar to the trade mark in relation to goods or services, which is already registered.

Facts:

Radico Khaitan Ltd., a manufacturer of alcoholic beverages was the plaintiff. The company was using the numeral i.e. 8 from 2006 itself till now, and they were generating scores of profit which was added onto their revenue turnover. Their sale during the years 2006-2007 till 2010-2011, was 2136.4 million to 2565.9 million. Later, Carlsberg started selling beer by launching the product in February 2011 under the trademark PALONE 8 with the numeral 8 being used in the same font and color as alike the one used by Radico.

Below are the products of Radico and Carlsberg respectively:

Radico:

1. 8PM BERMUDA XXX RUM

2. 8PM ROYALE

3. 8PM EXCELLENCE BRANDY

4. 8PM BERMUDA WHITE ORIGINAL with a slogan: “AATH KE THAATH”

Carlsburg:

1. PALONE8 WITH A SLOGAN: ‘8 KA DUM”

Dispute:

  • Related to the usage of numeral i.e. 8, color, identical font and identical font size with which the numeral, 8, is printed on the bottle “distinguishing & identifying feature of its mark.”
  • Idea of adding Slogan on 8 to make the product distinctive.
  • Price differentiation among the products is substantial.

Arguments by Radico:

  • Radico contends that Carlsberg is selling beer under the trademark Palone8 with numeral 8 being used in the same font size, same font and color. From the point of a reasonable person involved the trade in any way, and from the perspective of the practices prevalent in the industry i.e. to see what other players are doing in the same industry, it can potentially create confusion in the minds of the consumers.
  • By adding the slogan on numeral 8, Carlsberg essentially portrays the idea of Radico’s trademark which emerges in the minds of the consumers. They can associate and connect to Radico’s trademark i.e. 8PM while looking at the Carlsberg beer bottle with the label prominently displaying the numeral 8PM in the same font and size and with the same color and styling like that of Radico’s slogan.

Arguments by Carlsberg:

  • There are various alcoholic drinks brands in the market having reference to the numeral 8 like Signature and Bacardi. They contended that Numeral 8 was public juris which meant, it was a public right which is common to the trade in alcohol. Registration of the trademark Palone8 was under class 32 of Trademark Act 1999, and both the products belong to different class. Further, as the alcohol consuming consumers are very much aware, informed and can distinguish the features of beer / whisky/ rum/ brandy which are registered under the class 33 of trademark act 1999, it would not mislead the consumers.
  • Radico’s slogan “AATH KE THAATH” with numeral 8 showcases & somehow connects the numeric value to the luxury of Eight (8) empowering it in such a way. While on the other hand, Carlsberg using the slogan 8 “KA DUM” regarding numeral 8, shows the potency of eight rather than intending to mislead the consumers. Both belong to different class and both are different products. Even the other products like:
    – WHISKY under SIGNATURE with numeral 8, displayed prominently on the label,
    – Bacardi’s 8 RUM

    • Similarly, there are other various brands in alcoholic industry which uses the same concept to make their product distinctive either by adding numeral or by adding the slogans.
  • The reason about the price differentiation is substantial, Radico’s product i.e. whisky price is costing Rs.300 per bottle while Carlsberg product i.e. beer price is costing Rs. 65 per bottle. Well, if products belong to the different class and category, having distinct feature by itself then there will a cost differentiation. Beer cannot be sold at that range of price where Whisky and Rum are being sold.

Judgment:

On 20th December 2011, the Delhi High Court held the case in favour of Carlsberg and dismissed Radico’s prayer for injunction.

1 The plaintiff has registered his trademark as 8PM for advertising its product in the market and,

2. Both the goods & products have dissimilarity and both belong to different sections and class and beer is only a dilution of alcohol and not assuchalcohol,

3 And after applying the test of distinctiveness which includes numeral and considering the facts that Numeral 8 was public juris which meant, it was a public right which is common to the trade in alcohol. Merely by the stylized written form of the numeral 8, it cannot be a sufficient ground for Radico to obtain an injunction.

4. The decisive question is a simple trade dress analysis of the overall “look and feel” of the label, independent of its contents. Further, on comparing the two labels, it can be seen that there is no prima facie cause of any consumer confusion and damages caused, that would lead to infringement.

5.  It can be further seen that Radico had registration for a composite mark ‘8 PM’ and referring to Section 17 of the Trade Marks Act, a registered proprietor of a composite mark cannot seek exclusivity with respect to individual components of a Trade Mark. Since no exclusivity was claimed, there is no question of any infringement since the only common aspect in both the marks is the numeral 8.

Analysis:

As far as my opinion goes, I won’t defer and would go synonymous with the judgment, because of the following reasons:

  • Both the products belonged and classified under variant classes i.e. class 32 and class 33.
    • Class 32 Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.
    • Class 33 Alcoholic beverages (except beer).
    • Class 33 excludes beer and on the other hand it includes whisky, rum, brandy and alcoholic beverages.
  • -A strong reference to common practice in the trade of alcohol brought out that the numeral 8 is common to the trade, so there should not be any dispute regarding the usage of numeral i.e. 8.
  • -From the consumer’s point of view, if a consumer asks for a drink (in a bar or in a alcoholic shop near to roads ) ,he will refer to the drink category i.e. beer or whisky or so on ,he is aware of the fact that beer is different and whisky ,rum ,brandy are different ,and even if he is normal person who is drinking first time , through menu and  price of the product he can analysis that beer are much cheaper as compare to the whisky ,rum and brandy. So, there is always or at least often an aware consumer who is able enough to distinguish among the drinks or the type of alcoholic beverage which he/she wishes to prefer or to consume.
  • -Both the slogans reflect the different aspects of the product with different brand  messages related to the numeral 8, Radico products slogan message related to luxury of eight while Carlsberg product slogan message related potency of eight.

Roche v Cipla: Part 2: Infringement

In continuation of the last piece over here, let’s now discuss the actual issue of infringement of IN ‘774 patent by Cipla crisply. My apologies for a long delay in writing this piece due to long travelling schedule and back-to-back heavy projects thereafter. Nevertheless, it is better to be late than never. Here it goes.

The claim 1 of IN’774 is read as:

1. A novel [6,7-bis(2-methoxyethoxy)quinazolin-4-yl]-(3-ethynylphenyl)amine hydrochloride compound of the formula A [structure]

The defendant raised several defences resisting the infringement of this claim. The defendant provided an X ray diffraction of Tarceva and concluded that the drug is actually the Polymorphic Form B and that the features of Polymorph B contained in Tarceva corresponds with the US patent 221.

Further the defendant argued that the tablet of Erlotinib Hydrochloride cannot be made by way of simply following IN’774 rather the patent US‘221 is relevant for the same purpose and this shows that there is further process of reaction of the compound of  IN’774 with that of other constituents in order to arrive at Polymorphic version. The suit patent compound is thus not automatically leading to Polymorphic version.

Roche then argued that Claim 1 of the suit patent is for the Erlotinib Hydrochloride per se, and not restricted to any particular Polymorphic form or mixture of any forms, nor claims any particular Polymorphic form and that the Active Pharmaceutical Ingredient in the Defendant‘s product Erlocip is also Erlotinib hydrochloride. Roche submitted that the defendant could not have arrived at Polymorph B form without crossing the stage of preparation of combination Polymorph A and B and therefore, the defendant product even if the same is a Polymorphic Form B of the molecule would still infringe IN‘ 774.

Cipla’s main point of argument was that the separate patent applications were filed in India (IN’507) and US (US’221) for Polymorph form B and Erlotinib Hydrochloride and that clear admissions have been made that IN’774 relates to Polymorph A+B and the second patent US‘221 and corresponding application in India IN’507 relates to Polymorph B of Erlotinib Hydrochloride. According to Cipla, if Roche filed a fresh patent on Polymorph B, they themselves believed that Polymorphic version is distinct from that of the main compound and when IN’507is rejected by the Indian Patent Office, they took a U-turn and argued that the somersault and are arguing that the second product is covered by the first patent.

The judge followed the purpotive rule of construction of the patent claim,

whether the patent claim subsumes the product or the process impugned is a matter to be examined from the standpoint as to whether the patentee could have reasonably included the said product or process in question which is he is impugning on the fair reading of the invention

According to the Judge there are some of the facts which should have been deposed by Plaintiff in order to show that there is an infringement done by the defendant by manufacturing the Polymorphic version B which is covered in the main compound. Some of those main facts are:

  • How many reactants or variants with which the main Erlotinib compound is reacted with in order to arrive at the Polymorphic Form B of?
  • Whether the properties and the characteristics of the main compound changes or varies after the said reactants or variants are reacted with or not. The plaintiff in order to show that there is an infringement should have deposed to the effect that the said properties and characteristics are not changed pursuant to the reaction.

However, the plaintiff had not been able to show as to what is the exact nature of the plaintiff and defendant products which are being sold in the market, further, whether the said products corresponds exactly with the claim of the suit patent is also not established, among other facts.

On the other hand, the defendant was able to show that the plaintiff’s suit compound is a combination of A and B and the compound needs to be converted or separated in order to arrive at the Polymorphic version B. Plaintiff argued that the plaintiffs‘ suit compound is not separated but converted, to which Judge remarked that,

Whether the said compound is covered or separated, the moot question is that there is something which is done besides the compound as contained in the suit patent in order to arrive at Polymorphic B. if the answer is in affirmative, I think, the onus is discharged”.

The issue is accordingly decided in favour of the defendant and the suit and the counter claim were dismissed.

Conclusion

Thus, in the Indian geography, after the patent on the main compound is obtained, firstly it is extremely difficult to get a subsequent selection patent on polymorph (or other forms) on ground of Section 3d and secondly and importantly the marketed drug based on polymorphic form would easily be prone to generic competition without infringement of the main patent.

About the Author: Meenakshi Khurana, Patent Attorney, available at meenakshi@khuranaandkhurana.com