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AstraZeneca AB & Anr. v. Westcoast Pharmaceutical Works Ltd.: Infringement Suits Not Barred by Pending Post-Grant Oppositions

Key Takeaway: The Delhi High Court held that a patentee’s right to sue for infringement under Section 48 of the Patents Act vests immediately upon grant and is not deferred until post-grant oppositions are resolved. Paragraph 19 of Aloys Wobben v. Yogesh Mehra (2014) is obiter and does not preclude suits during pending oppositions.

I. Factual and Procedural Background

In the suit, AstraZeneca AB (Sweden) and AstraZeneca Pharma India Ltd. alleged infringement of Indian Patent No. 297581 (“IN’581,” granted June 11, 2018) for the anticancer compound Osimertinib. They claimed that Westcoast Pharmaceutical Works Ltd. had begun manufacturing and was marketing—or preparing to market—infringing products in India. The plaintiffs sought:

  • Permanent and interim injunctions

  • Damages of ₹2,00,01,000

  • Delivery-up, accounts and other reliefs

IN’581 faced post-grant oppositions under Section 25(2) filed by Sunshine Organics Pvt Ltd. (May 14, 2019) and Natco Pharma Ltd. (June 10, 2019), pending before the Controller General of Patents when suit was filed February 8, 2022.

Westcoast moved under Order VII Rule 11 CPC (I.A. 21995/2022) to reject the plaint on three grounds:

  1. Lack of pecuniary jurisdiction, arguing the suit was quia timet, not actual infringement, capping claim at ₹1,000.

  2. Lack of territorial jurisdiction, as defendant resides outside Delhi.

  3. Pending oppositions, relying on paragraph 19 of Aloys Wobben to assert that patentee’s infringement rights crystallize only post-opposition.

After hearing on May 12, 2023, Justice C. Hari Shankar dismissed Westcoast’s application on May 15, 2023, and reserved a related Order XIIIA Rule 3 application (I.A. 1079/2023) for August 1, 2023.

II. Issues for Determination

  1. Whether the asserted damages of ₹2.00 crore confer pecuniary jurisdiction on the High Court if the action is purely quia timet.

  2. Whether territorial jurisdiction lies in Delhi High Court.

  3. Whether pending post-grant oppositions bar an infringement suit under Section 48.

  4. Whether paragraph 19 of Aloys Wobben is binding or obiter and its impact on Section 48 rights.

III. Contentions

A. Defendant

  • Pecuniary Jurisdiction: Cited Toni & Guy v. Shyam Sunder Nagpal (2007 DLT 309) to argue that without actual infringement, damages are nominal and below High Court threshold.

  • Territorial Jurisdiction: Contended courts in jurisdictions of defendant’s or foreign plaintiff’s residence were proper fora.

  • Pending Oppositions: Relied on Aloys Wobben [(2014) 15 SCC 360, para 19], asserting that until oppositions conclude or one-year lapses, infringement rights remain uncrystallized, making suits “unlikely and quite impossible.” Cited interlocutory rulings in Pharmacosmos Holding (2019 78 PTC 329) and Sergi Transformer (2015 SCC OnLine Bom 6984, stayed by SC).

B. Plaintiff

  • Pecuniary Jurisdiction: Argued actual manufacture and sale justify full damages claim, distinguishing Toni & Guy.

  • Territorial Jurisdiction: Not pressed; wrong procedural vehicle under Order VII Rule 11.

  • Pending Oppositions: Invoked proviso to Section 11A(3) and Section 48, contending statutory right to sue arises on grant, irrespective of oppositions. Maintained Aloys Wobben concerned counterclaims in revocation, not standalone infringement.

  • Obiter vs. Ratio: Relied on Career Institute v. Om Shree Thakur (2023 SCC OnLine SC 586) to apply inversion test, showing para 19 was unnecessary to Aloys Wobben’s outcome and thus obiter.

IV. Judicial Analysis

1. Pecuniary Jurisdiction

Under Order VII Rule 11, the plaint’s averments must be assumed true. The court found allegations of actual manufacture and sale sufficient to sustain a ₹2 crore damages claim, exceeding ₹10 lakh district court threshold and validating High Court jurisdiction.

2. Territorial Jurisdiction

Challenges to territorial competence lie under Order VII Rule 10, not Rule 11. As Westcoast did not pursue an Order VII Rule 10 application, the question remains open for such challenge but does not warrant rejection under Rule 11.

3. Effect of Post-Grant Oppositions

  • Statutory Scheme: Section 48 grants exclusive rights immediately upon patent grant. The proviso to Section 11A(3) confirms no further conditions delay infringement suits.

  • No Bar in Patents Act: The Act contains no provision deferring enforcement until oppositions conclude or one-year expires.

  • Policy Considerations: Preventing suits during oppositions would encourage strategic oppositions to delay enforcement and compress the effective patent term.

4. Interpretation of Aloys Wobben

  • Context: Concerned counterclaims in revocation petitions and did not involve standalone infringement suits.

  • Para 19 as Obiter: Applying the inversion test (Career Institute), the court held that excising paragraph 19 would not alter Aloys Wobben’s decision, marking it as obiter dicta.

  • Binding Authority: Under Article 141, only ratio decidendi binds; obiter carries persuasive but non-binding weight (Director of Settlements v. Apparao, 2002 4 SCC 638; Arun Kumar Aggarwal, 2014 13 SCC 707).

V. Law Settled

  1. Immediate Enforcement: Patentees may sue for infringement under Section 48 upon grant, regardless of pending post-grant oppositions.

  2. Order VII CPC Distinctions:

    • Rule 11 addresses non-cognizable causes and jurisdictional defects that render plaint non-maintainable on its face.

    • Rule 10 governs territorial jurisdiction challenges.

  3. Obiter vs. Ratio: Supreme Court observations incidental to the decision are non-binding under Article 141.

  4. Statutory Clarity: The Patents Act does not envisage a moratorium on enforcement during opposition, preserving the patent’s full term and deterrent effect.

VI. Conclusion

Justice C. Hari Shankar’s judgment in AstraZeneca AB & Anr. v. Westcoast Pharmaceutical Works Ltd. delivers a clear rule: post-grant opposition proceedings do not suspend a patentee’s right to litigate infringement. By distinguishing obiter dicta from binding holdings and upholding Section 48’s immediate enforcement, the Delhi High Court ensures patentees can promptly protect their monopoly rights and discourages tactical oppositions aimed at delaying remedies. This decision provides a vital precedent for patent enforcement strategy in India.

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