G. H. Malik, J.-- CMA.. No.6409/92: By this application, the plaintiffs have sought, pending the hearing and disposal of the suit, to restrain the defendants, acting directly or indirectly or through their employees, agents, distributors, dealers or otherwise, and all persons claiming through them, from manufacturing, importing, selling, stocking for sale or marketing any drug or medicine containing Cimetidine 'A' under the name "CIMET" or any other name.
2. The case of the plaintiffs, as set out in the plaint, is that the Plaintiff No.1 is a subsidiary of Smithkline Beecham pic and is engaged in discovery, development, manufacture and marketing of safe and effective medicines of the highest quality. It is alleged that the plaintiff No.1 is the proprietor of a valid and subsisting Pakistani Patent No.126617 granted to it by the Government of Pakistan under the Patents and Designs Act, 1991, in respect of an invention entitled "Process for preparing Cimetidine 'A'. The Plaintiff No.2 is the authorised user of the patent in Pakistan and is also a subsidiary of. Smithkline Beecham pic. The subject-matter of the patent is a drug or compound which is a polymorphic form of cimetidine which is substantially crystallographically pure and is known as Cimetidine 'A' which was discovered and developed by the Plaintiff No.1 in a long period of research from 1964 to 1972. It is a class of drugs known as histamine H2 receptor antagonist. The plaintiffs are selling the said drug under the brand name 'Tagamet'. It is alleged in paragraph 12 of the plaint that the Defendant No.1 is manufacturing and/or importing and selling a drug containing Cimetidine 'A' under the name "CIMET" and that the drug being sold by the Defendant No.1 has been made in accordance with the invention described in the patent of the plaintiffs and is a pharmaceutical composition made in accordance with the invention described in the patent. It is further alleged in para 12 of the plaint that both the packing in which the drug is sold by the defendants as well as the label on the box and the printed literature clearly state and\ admit that the drug which is being sold contains Cimetidine. Such action, on the part of the defendants, is alleged to be an infringement of the aforesaid patent of the plaintiff.
3. The defendants have not filed their written statement but the defendant No.1 has filed a counter affidavit objecting to the grant of temporary injunction on various grounds. Mr. K.MA. Samdani, the learned Counsel for the Defendant No.1, conceded that the plaintiff is the owner of Pakistani Patent No.126617 and that the violation of that patent would be unlawful. He, however, contended that there has been no infringement of the patent by the defendants because (1) the drug being sold by the defendants is not the same as the drug of the plaintiffs, to which the patents relates, and has not been manufactured by using the patented process (2) that the patent can only be taken out by a natural person and not by a company, (3) that the defendant No.1 has been importing and selling its drug since May 1988 and the plaintiffs did not file the present suit till December 1991, so that, on account of delay in filing the suit, the plaintiffs are disentitled to the interim relief asked for,
(4) that the Defendant No.1 has filed a suit against the plaintiffs in the Court of the District Judge at Lahore under Section 36 of the Patents and Designs Act and that the present suit is liable to be stayed under Section 10 of the Code of Civil Procedure, (5) that the plaintiff has failed to disclose the filing of the suit at Lahore and is, therefore, not entitled to interim relief, (6)'that the plaintiff has failed to disclose a prima facie case, 7) that the plaintiff would not suffer irreparable damage if temporary injunction is not granted, (8) that the balance of convenience is against the plaintiff, and (9) that, the injunction will operate against public interest.
In support of their allegation that "CIMET", the drug being sold by the defendants, contains Cimetidine 'A' and has been manufactured by the patented process of the Plaintiff No.1, the plaintiffs have filed, with the plaint, an affidavit of one Daniel John Evans who is a manager of the Analytical Department of Smithkline & French Laboratories. His opinion, expressed in the affidavit, is that (i) the cimetidine used in the defendants drug is Cimetidine 'A' and (ii) the crystallisation process whereby Cimetidine 'A' in the defendants' drug was prepared was in violation of the plaintiffs patent. The opinion is based on the tests carried out under his direct supervision. The first test employed by him was infra red spectroscopy and the infra red spectrum obtained by the test showed "strong peaks at 1205 cm-1 and 1155 cm-1 (which are clearly and conclusively indicative of Cimetidine A) and an absence of a peak at 1180 cm-1 (which is indicative of the absence of cimetidine B and C)" thus establishing that "the cimetidine present in the "Cimetidine/Cimet" tablets were -substantially crystallographically pure Cimetidine A". The second test was gas chromatography which is used to determine the residual solvent present in the substance being tested. It "indicated that Isopropanol was present (in the defendant's drug) and had been used to crystallise the Cimetidine 'A'. "It is claimed in the affidavit that "The residual presence of Isopropanol clearly and conclusively established that the crystallisation process used in preparing the Cimetidine A in the "Cimetidine/Cimet" tablets was the same as is covered by and clamied in the SK&F Patent."
4 .The defendants have not, in their counter affidavit, challenged the affidavit of Daniel John Evans, nor have they produced any expert evidence to show that the opinion expressed in that affidavit is incorrect. Mr. Samdani, however, urged, in the course of arguments, (i) that the opinion expressed in the affidavit is biased and "dishonest" because Daniel Evans is admittedly an employee of the parent company of the plaintiff No.1 (ii) that the presence of cimetidine A in the defendant's drug was not proved by the infra red spectroscopy because it showed only "strong peaks at 1205 cm-1 and 115 cm-1" whereas, according to the complete specification in the patent, cimetidine A is characterised by an infra red spectrum having very strong broad peaks at 1400 and 1385 cm-1, a strong sharp peak at 1205 cm-1 and a medium sharp peak at 1155 mc-1, and (iii) that the presence of Isopropanol in the defendant's drug is because it is used for film coating the tablets produced and sold by them. Merely because Daniel Evans is an employee of the plaintiffs parent company, that is no reason to characterise his affidavit as biased or dishonest. As for the absence of peaks at 1400 and 1385 cm-1 in the infra red spectroscopy, Mr. Khalid Anwar, the learned Counsel for the plaintiffs, stated that it is of no significance because a drug can be identified by even two "peaks" or "finger prints". Be that as it may, the categorical opinion of Daniel Evans has not been contradicted by any material on record; and, in any case, Mr. Samdani did not say anything about the absence of the peak at 1180 cm-1 which, according to the opinion of Daniel Evans, is indicative of the absence of Cimetidine B and C. The presence of Isopropanol in defendant's drug was admitted when Mr. Samdani sought to explain it away by saying that Isopropanol was used for film coating the defendant's tablets. There is, thus, no reason to disbelieve, for the purpose of the present application, the assertions contained in the affidavit of Daniel John Evans.
Mr. Samdani further submitted that the basic drug is cimetidine and its modifications are Cimetidine A, Cimetidine B, Cimetidine C and Cimetidine H (or M-l); and that Cimetidine A can be manufactured by processes other than the process of which the plaintiffs have a patent. He referred to Patent No. 130792 in respect of the process for preparation of modification A of Cimetidine from Cimetidine H, which has allegedly been granted to an Hungarian .Company. That may be so but the defendants have not produced any evidence to indicate that their drug has been produced by a process other than the process for which the plaintiffs hold the patent. I would, in the circumstances, hold that the plaintiffs have established, prima facie, that the drug being sold by the defendants contains cimetidine A and has been manufactured by using the process for which the plaintiffs hold the patent.
5. Mr. Samdani then contended that the patent of the plaintiffs is not valid because a patent can only be taken out by a natural person and not by a company. He relied on Section 3(1) of the Patents and Designs Act 1911 which provides that "An application for a patent may be made by any person whether he is a citizen of Pakistan or not, and whether alone or jointly any other person"; and contended that since only a natural person can be a citizen of Pakistan the intention behind Section 3 of the Act is that only a natural person can taken out a patent. Mr. Samdani also relied on the case of V.B. MOHAMMAD IBRAHIM v. ALFRED SCHAFRANEK and others (A.I.R. 1960 MYSORE 173) where it was held that "A firm cannot be said to have the capacity to invent. It cannot be called an inventor although there may. Be no objection to its being registered as a patentee either on assignment by a patentee or jointly with the true and first inventor' and, further, that a corporation cannot be the sole applicant claiming to be the inventor." Mr. Khalid Anwar contended, on the other hand, that Section 3 of the Patents and Designs Act provides that any "person" may make an application for a patent; and that the word "person'^according to Section 2(239) of the General Clauses Act, includes a company. He further submitted that the effect of the case reported in A.I.R.
1960 MYSORE 173 is merely that an inventor has to be a natural person and that a company may be registered as a patentee. In that case, the plaintiff had filed a suit for damages and for injunction to restrain the defendants from manufacturing and marketing flower designs chair seats on the ground that the plaintiff had patent rights. However, the registered patentees were the defendants and the name of the plaintiff was not borne on the register of patents. It was held that the plaintiff was not entitled to file the suit unless he had got his name included in the register of patents under Section 63 of the Patents and Designs Act. The observations relied upon by Mr. Samdani were, therefore, obiter; and, in any case, as submitted by Mr. Khalid Anwar, that case was concerned only with the right of a firm to claim to be an inventor. It may be noted that the learned judges of the Mysore High Court, while holding that a firm cannot be called an inventor, upheld the right of a firm to be registered as a patentee on assignment by a patentee. Indeed sub-section (3) of section 3 of the Act expressly confers such a right. There is nothing on the record to show that Plaintiff No.1 applied for and obtained the patent otherwise than in accordance with the provisions of the Act; and it must, therefore, be presumed that the patent was granted to plaintiff No.1 in due compliance with the provisions of the Act. Further, the patent of the Plaintiff No.1 was granted or sealed on the 21st September, 1976, and has subsisted since then without any challenge and the defendants have not filed any counter claim for revocation of the patent. It may be noted that one of the grounds on which such a counter claim may be filed is that the true and first inventor or his legal representative or assign was not the applicant or one of the applicants for the patent. Prima facie, therefore, the plaintiff No.1 is the owner of a valid and subsisting patent.
6. It was then submitted on behalf of the defendants that they have been importing and selling their drug since May, 1988, but the plaintiffs did not file the present suit until December, 1991; and it was contended that, on account of delay in filing the suit, the plaintiffs are not entitled to the interim relief. Mr. Khalid Anwar submitted that the plaintiffs, upon coming to know that the defendants were infringing the plaintiffs patents, served upon them a notice dated 3rd April, 1991, (Annexure 'E-l' to the plaint); that it was not the defendants' case in their reply to the said notice that they were selling their drugs since i988. By that reply (Annexure 'E-2' to the plaint) the defendants merely requested the plaintiffs to let them have full details of the process patented by the plaintiffs. The plaintiffs by their letter dated 10th June, 1991, (Annexure 'E-3' to the plaint) sent a copy of the patent to the defendants and once again called upon them to desist from making/selling cimetidine under the name "Cimetidine" or any other name. The plaintiffs subsequently obtained a cash memo for sale of Cimet issued by the Defendant No.2 on the 5th August 1991. Mr. Khalid Anwar submitted that there was, thus, delay, if any, of only four months from the date of the aforesaid cash memo; and that, the defendants not having acted to their detriment, such delay was of no consequence. Mr. Samdani relied on GLAXO GROUP LIMITED v.
EVRON (PRIVATE) LIMITED AND ANOTHER (PLD 1991 Karachi 252) while Mr. Khalid Anwar sought support from T.J. SMITH & NEPHEW LTD v. 3M UNITED KINGDOM PLC (1983 P.R.C. 92), SANDOZ LIMITED AND ANOTHER v. PAKISTAN PHARMACEUTICAL PRODUCTS LIMITED (1987 CLC 1571) and GLAXO GROUP LIMITED v. PAKISTAN PHARMACEUTICAL PRODUCTS (PVT) LTD (1991 M LD 85)
7. Now, the rule regarding delay or laches is that it must amount to such negligence or omission to asset right as, taken in conjunction with the great lose of time and other circumstances, causes prejudice to an adverse party. If person seeking a remedy has not committed such a delay as would cause prejudice to the other side or would amount to waiver or acquiescence on the part of the person seeking the remedy, technical plea of laches, by itself, would not* be sufficient to bar the remedy"- See MIAN MIRAJ-UD-DIN v. THE SENIOR SUPERINTENDENT OF POLICE (PLD 1970 Lahore 569). Obviously, whether or not there is a delay of the kind mentioned above must depend 6n the facts and circumstances of each case. In the present case the alleged delay is not such as to disentitle the plaintiff to relief. The plaintiffs have averred that, they served a notice on the defendant No.1 on coming to know that the latter were selling a drug containing Cimetidine A. The notice is dated the 3rd April, 1991. The defendants have alleged that they have been selling their drug since 1988 but there is not even an allegation that the plaintiffs were aware of such sale.
Further, there appears to be no waiver or acquiescence on the part of the plaintiffs because they served a notice on the defendants on coming to know that the latter were selling a drug containing Cimetidine 'A' and thereafter maintained their objection to the infringement of their patent. As for prejudice to the defendants, again there is no allegation and no material on record to show that prejudice has been caused to the defendants by the alleged inaction on the part of the plaintiffs.
Mr. Samdani submitted that the defendants have filed a suit, under Section 36 of the Patents and Designs Act, against plaintiff in the Court of the District Judge at Lahore and that the present suit is, therefore, liable to be stayed under Section 10 of the Code of Civil Procedure. He, however, did not advance any argument in support of his submission. Mr. Khalid Anwar submitted that Section 10 of CPC does not apply in this case because the matters in issue in the two suits are not the same and further that, in view of the proviso to Section 36, that section is no longer applicable because the plaintiffs have commenced and are prosecuting the present action with due diligence. Since Mr. Samdani did not address any argument in support of his submission, it is not possible to decide whether, in the facts and circumstances of this case, the provisions of Section 10, CPC, are attracted. In any case, it has been held that an order staying a suit under Section 10 CPC does not prevent a Court from making interlocutory orders, such as orders for a receiver or an injunction or an order for attachment before judgment-See SENAJI KAPURCHAND AND OTHERS v. PANNAJI.
DEVICHAND (AIR 1922 Bombay 276).
'
8. The allegation that the plaintiffs have not disclosed the filing of the suit by the defendants at Lahore is belied by paragraph 13 of the plaint.
In the above circumstances, I am clearly of the opinion that the plaintiffs have established a strong prima facie case.
It was then contended on behalf of the defendants that the plaintiffs would not suffer irreparable damage by refusal to grant an injunction, and are, therefore, not entitled to ask for temporary injunction. The argument was that the prayer for payment of Rs.30 million shows that relief in terms of money would be adequate compensation. It appears that the prayer for payment of Rs.30 million is not for damages for infringement of the plaintiffs patent. In paragraph 18 of the plaint, it is averred that the plaintiffs, in the circumstances alleged, are suffering serious and irreparable loss and are, therefore, entitled to a permanent injunction against the defendants. In paragraph 19 of the plaint the plaintiffs' claim for accounts has been set out and it is further pleaded, "the plaintiffs have, in addition, suffered and are continuing to suffer losses and damages to their reputation and.
Name in the market. These damages are conservatively estimated at Rs.30 million." It would, thus, appear that the claim for Rs.30 million is not on account of the alleged infringement of the plaintiffs patent but on account of injury to the reputation of the plaintiffs. 'No other argument was advanced by Mr. Samdani in support of his contention regarding monetary compensation being adequate relief. In any case, it appears quite clear that in the facts and circumstances of this case, and particularly considering that the plaintiffs have invested considerable amount of time, money and energy in the invention in question, they would suffer irreparable damage if the defendants are not, pending the hearing of the suit, restrained as prayed.
9. The plaintiff have made "enormous" investment in the drug Cimetidine A which, it is averred, is one of the world's largest selling prescription medicine running into one billion dollars annually. The defendants, on the other hand, do not manufacture their drug but merely import it in powder form from manufacturers abroad and sell it in Pakistan; and there is nothing on the record to show the capital investment, if any, made by the defendants in their business of importing and selling the drug in question. Further, if the temporary injunction is refused and the plaintiffs succeed at the trial, they will not only suffer losses during the period while the suit remains pending disposal but also in the period thereafter because the defendants, in the meantime, will be able build up their market and, consequently, offer greater competition. The plaintiffs would, thus, be subjected to continuing losses which it may be impossible to assess. On the other hand, in the event of injunction being granted and the defendants succeeding at the trial, the damages 'which they will suffer will be more easily assessable. The balance of convenience is, therefore, in favour of granting the temporary injunction as prayed.
10. The contention that temporary injunction against the defendants would operate against public interest was based on the allegation that the price of the plaintiffs' drug is exorbitant as compared to the price at which the defendants are selling their drug. That, however, is not a relevant consideration for the purpose of the present application.
For the above reasons, the plaintiffs' application for temporary injunction is granted as prayed.