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Doctrine Of Equivalence And
Process Patent
By Ajayamitabh7 | Views 3973
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The Subject matter Suit pertains to
infringement of Plainti몭's patent under
Indian Patent No. 298645 (IN 645). The
subject matter Suit relates to claim
construction of a process patent and
applicability of Doctrine of Equivalence in
this regard.
The Plainti몭 몭led the subject matter Suit
basing it's right in IN 645 which was a
process Patent. The allegation of the
Plainti몭 in this case was that the Defendant
was infringing the process patent of the
Plainti몭. On the other hand, the defendant
was, o몭 course denying the infringement of
the process Patent of the Plainti몭. This was
the issue which was to be decided by the
Hon'ble High Court of Delhi.
Vide its Judgement dated 19.09.2022 passed
in Suit bearing CS COMM 349 of 2022 , the
Hon'ble High Court of Delhi, in the matter
titled as FMC Corporation and Ors Vs Natco
Pharma Limited not with dealt with the
issue of applicability of doctrine of
equivalence in a process patent but also
clari몭ed this position as to what weightage
has to be given to expert opinion of
Scienti몭c advisers appointed by the Court.
The subject matter Indian Patent No.
298645 (IN 645) was granted by the
Controller of Patents, in favour of the
Plainti몭 on 06.12.2005. As per assertion of
the Plainti몭, this Patent was a novel method
for preparing "anthranilic diamide
insecticide compounds" with a total of 12
claims.
This Patent was a process Patent for
preparing "anthranilic diamide insecticide
compounds" in which a carboxylic acid
compound, an aniline compound and a
sulfonyl chloride are combined together.
This case was 몭led against the Defendant
alleging that the Defendant was also using
similar method of activation of carboxylic
acid moiety, in substantially the same way,
i.e., coupling of carboxylic acid with aniline
to achieve the same result, i.e., yield CTPR.
However the Defendant denied by asserting
that in the Plainti몭's Patent, sulfonyl
chloride is used as reagent for coupling
carboxylic acid intermediate with aniline
intermediate in a single step.
While Defendant's process involves two
separate and discrete stages , carboxylic
acid intermediate is converted to an acid
chloride using thionyl chloride in a 몭rst
reactor and the bio-products so formed viz.
SO2 and HCl gases are scrubbed in caustic
soda solution to give NaCl and NaHSO3,
which are useful in food and cosmetic
industries.
Then acid chloride of this step is reacted
with amide intermediate in a second reactor
to obtain CTPR. Thus allegation of
infringement of Patent was denied by the
Defendant.
The Plainti몭 invoked the doctrine of
equivalence to allege that even if the
Defendant's process does not literally
infringe the suit patent, it may be found to
infringe on the bedrock of 'equivalence. The
Doctrine of Equivalents mandates that in
the absence of literal infringement, a
product may be found to infringe a
patented product, if it is found to be its
substantial equivalent.
While Defendant was asserting that element
to element test has to be applied. The basic
foundation of the Defendant argument was
that the reagent used by the Plainti몭 in the
subject matter Patent i.e. sulfonyl chloride
was an essential element in Plainti몭s'
process, on the contrary the Defendant uses
thionyl chloride as the reagent.
Now the question was that , whether the
Defendant can evade the doctrine of
equivalence as alleged by the Plainti몭 by
relying upon this fact that the reagent used
by the Plainti몭 in their Patent was sulfonyl
chloride and that the reagent used by the
Defendant is thionyl chloride , which is
di몭erent.
The Hon'ble High Court of Delhi
summarized the applicability of Doctrine of
Equivalence as advanced by the Plainti몭 and
Doctrine to element to element test, as
argued by the Defendant by observing that
the Doctrine of Equivalents must be applied
to individual elements of the claim and an
analysis of the role played by each element
in the context of the speci몭c patent claim
will thus inform the enquiry as to whether a
substitute element matches the function,
way and result of the claimed element or
whether the substitute element plays a role
substantially di몭erent from the claimed
element.
In such a situation , the role of di몭erent
reagent applied by the Plainti몭 in their
process became important. For this
Scienti몭c advisors were appointed by the
Hon'ble High Court of Delhi , who given their
몭nding to the e몭ect that sulfonyl chloride is
an essential element of the suit patent.
Thionyl chloride used as a reagent in the
Defendant process, di몭ers from sulfonyl
chloride in its physical and chemical
properties.
As Scienti몭c advisers gave their 몭nding to
the e몭ect that the essential element used by
the Plainti몭 and the Defendant in their
respective Patent and respective product ,
i.e. sulfonyl chloride and Thionyl chloride
are di몭erent in their physical and chemical
property, the natural consequence would be
that allegation of infringement has to fail.
The Hon'ble observed that weightage of of
Scienti몭c advisers has to be given and that
Courts are not experts and should not
substitute their views or opinion for those of
the experts or specialists in the 몭eld. Thus
Court declined the injunction to the Plainti몭
as the Plainti몭 was unable to establish that
the process used by the Defendant in their
product was equivalent to the Suit Patent
Process.
From the afore mentioned discussion it is
apparent that in cases pertaining to Process
Patent, the Plainti몭 is required to establish
that the process used by the Defendant in
its product is equivalent to the process used
in the Plainti몭's Process Patent.
Doctrine of Equivalent does not require the
element to element comparison of Plainti몭's
and Defendant's Process. What court is
required to see whether the essential
feature of Defendant's process and
Plainti몭's process are same or di몭erent? In
doing so , the tri몭ing di몭erences has to be
ignored. Thus if the Defendant imitates the
essential feature of the Plainti몭's Process
Patent then the same falls within the trap of
Doctrine of equivalence.
Case Law Discussed:
FMC Corporation and Ors Vs Natco Pharma
Limited
Judgement Date:19.09.2022
Case No. CS [COMM] 349 OF 2022
Hon'ble High Court of Delhi: Jyoti Singh, H.J.
Written By: Ajay Amitabh Suman, IPR
Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539