Monsanto Technology LLC v Nuziveedu Seeds Ltd (2019)

Summary

“The appellants/plaintiffs in Civil Appeal Nos.4616-4617 of 2018 instituted Civil Suit (Comm) No. 132 of 2016 seeking permanent injunction against the defendants from using the trademark ‘BOLGARD’ and ‘BOLGARD II’ brand cotton technology, violating the registered patent no. 214436 of the plaintiffs” (para 2). “The defendants also filed a counter claim no.51 of 2016 seeking revocation of the patent under Section 64 of the Act, as being in violation of Section 3(j) of the Patents Act” ... “in respect of plants and seeds that contained DNA sequences, denying any infringement.” (para 4) “The learned Single Judge simultaneously only issued notice on the counter claim no.51 of 2016.” (para 5) “The Division Bench dismissed the plaintiffs’ appeal upholding the defendants’ contention with respect to patent exclusion under Section 3(j) of the Act and that the plaintiffs were at liberty to claim registration under the PPVFR Act” (“Protection of Plant Varieties and Farmers’ Rights Act, 2001”), “as the two Acts were not complementary, but exclusive in the case of all processes and products falling under Section 3(j) of the Act. Consequentially, the defendants’ counter claim succeeded.” (para 6)

“Manifestly, the counter claim of the defendants was never considered by the learned Single Judge as only notice had been issued on the same.” (para 22) “The Division Bench therefore ought to have confined its adjudication to the question whether grant of injunction was justified or unjustified in the facts and circumstances of the case.” (para 22) “Section 64 of the Act provides for revocation of patent based on a counter claim in a suit. It necessarily presupposes a valid consideration of the claims in the suit and the counter claim in accordance with law and not summary adjudication sans evidence by abstract consideration based on text books only.” (para 23) The Court was “satisfied in the facts and circumstances of the case that the nature of the injunctive relief granted by the Single Judge was in order and merits no interference during the pendency of the suit.” (para 25) “The order of the Division Bench is set aside. The order of the Single Judge dated 28.03.2017 is restored and the suit is remanded to the learned Single Judge for disposal in accordance with law.” (para 26)

What the court decided

1. The counter-claim not considered. “Manifestly, the counter claim of the defendants was never considered by the learned Single Judge as only notice had been issued on the same.” ... “We see no reason to reject the submission of Dr. Singhvi that it stands to reason why the plaintiffs would have consented to a summary adjudication of an existing patent and risk losing the same without any merit adjudication. The defendants themselves had contended in their appeal that the issues were complicated requiring expert evidence to be considered in a full-fledged trial.” (para 22)
2. The limits of the appeal. “The Division Bench therefore ought to have confined its adjudication to the question whether grant of injunction was justified or unjustified in the facts and circumstances of the case. The Division Bench ought not to have examined the counter claim itself usurping the jurisdiction of the Single Judge to decide unpatentability of the process claims 1-24 also in the summary manner done.” (para 22)
3. Summary adjudication. “Summary adjudication of a technically complex suit requiring expert evidence also, at the stage of injunction in the manner done, was certainly neither desirable or permissible in the law. The suit involved complicated mixed questions of law and facts with regard to patentability and exclusion of patent which could be examined in the suit on basis of evidence.” (para 22)
4. Revocation by counter-claim. “Section 64 of the Act provides for revocation of patent based on a counter claim in a suit. It necessarily presupposes a valid consideration of the claims in the suit and the counter claim in accordance with law and not summary adjudication sans evidence by abstract consideration based on text books only.” (para 23)
5. The procedure of the Code. “The Civil Procedure Code provides a detailed procedure with regard to the manner in which a suit instituted under Section 9, including a counter claim has to be considered and adjudicated. The Code mandates a procedure by settlement of issues, examination and cross examination of witnesses by the parties, including discovery/inspection of documents, culminating in the hearing of the suit and decree. A suit can be disposed of at the initial stage only on an admission inter alia under Order 12 Rule 6 or when the parties are not in issue under Order 16 Rule 1 and the other grounds mentioned therein, none of which are applicable herein.” (para 23)
6. Documents from the public domain. “We are therefore satisfied that the Division Bench ought not to have disposed of the suit in a summary manner by relying on documents only, extracted from the public domain, and not even filed as exhibits in the suit, much less examination of expert witnesses, in the facts of the present case.” (para 23)
7. Questions for trial. “There is no gain saying that the issues raised were complicated requiring technological and expert evidence with regard to issues of chemical process, biochemical, biotechnical and micro-biological processes and more importantly whether the nucleic acid sequence trait once inserted could be removed from that variety or not and whether the patented DNA sequence was a plant or a part of a plant etc. are again all matters which were required to be considered at the final hearing of the suit.” (para 23)
8. The trial of a suit. “The manner in which a suit instituted under Section 9 of the Code is required to be dealt with and decided, fell for consideration in Alka Gupta vs. Narender Kumar Gupta, (2010) 10 SCC 141” (para 24), where it was held that “There are no short-cuts in the trial of suits, unless they are provided by law. A civil suit has to be decided after framing issues and trial permitting the parties to lead evidence on the issues, except in cases where the Code or any other law makes an exception or provides any exemption.” and that “A suit cannot be short-circuited by deciding issues of fact merely on pleadings and documents produced without a trial.” (para 24)
9. The interim order. “The Division Bench ought to have confined itself to examination of the validity of the order of injunction granted by the learned Single Judge only. But we are not inclined to remand the matter for that purpose to the Division Bench as we are satisfied in the facts and circumstances of the case that the nature of the injunctive relief granted by the Single Judge was in order and merits no interference during the pendency of the suit.” (para 25)
10. Procedure. Relief. “The order of the Division Bench is set aside. The order of the Single Judge dated 28.03.2017 is restored and the suit is remanded to the learned Single Judge for disposal in accordance with law. In view of the importance of the question involved, we expect the parties to cooperate and facilitate the learned Single Judge in early disposal of the suit.” (para 26)

What the court did not decide

“Though very elaborate submissions have been made with regard to facts and the technical processes involved in the patent in question, the provisions of the Act, the PPVFR Act” (“Protection of Plant Varieties and Farmers’ Rights Act, 2001”) “and a large volume of case laws for construction of patents, the obligations under the World Trade Organisation (WTO), General Agreement on Tariffs and Trade (GATT), Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, leading to the Patents Amendment Act, 2002 on 25.06.2002, in view of nature of the order proposed to be passed, we do not consider it necessary to deal with the same at this stage, and leave open all questions of facts and law to be urged for consideration in appropriate proceedings.” (para 19)

Subsequent treatment

No later judicial treatment traced as of 10 October 2026.