FMC v. Natco: On the Doctrine of Equivalents for Process Patents
Here is the ratio from yesterday’s Delhi High Court appeals decision in FMC v. Natco Pharma:
In sum, the Delhi High Court offers up a fairly conservative extension of the doctrine of equivalents test for a patent infringement claim involving a process.
In sequence, it makes four observations to take forward (and contrary to what I’ve seen elsewhere online in the past 24ish hours, four observations only).
First, the Court says that there is nothing inherent to the doctrine of equivalents — historically a sorting hat for product patent claims — that makes it a bad stylistic fit for process patent claims in India. Given the shortage of process patent law under India’s Patents Act, this is certainly something gained. However, as a proposition, it doesn’t travel much further than saying that the proposition is legitimate because there is no reason why it shouldn’t be. There is no engagement on Indian precedent (or, indeed, statutory complications to extending equivalents law to process patents). The recitation of English case law in support of this assertion over process patent territory is rote and distinctly textbookish, though free from errors.
Second, the Court finds that the manner of the integration of equivalents law to process patent claims must, as a first step, involve the identification of the “essential elements and steps” of the rival processes. This finding suffers from many of the same limitations as the first one. It simply asserts a claim over relatively new ground, with an underlying tone of ‘no reason why not’. This is well and good, in the sense that the end result happens to be legitimate. However, little by way of conceptual underpinning is considered. Certainly, none is offered.
Third, the Court concludes, on the facts before it, that the essential elements of the rival processes were, in fact, tolerably different, and that this conclusion was apparent from a comparison of the text of the FMC’s patent and a consensus summary of Natco’s process in use. This is, of course, valuable in personam. (Indeed, if you do want take issue with the wrinkles of how sulfonyl chloride and thionyl chloride can be variously deployed in the manufacture of Chlorantraniliprole — the process controversy that lies at the core of this FMC/Natco dispute — this judgment is very much for you.) More broadly, though, the ruling doesn’t venture beyond the facts. So, if you come away from this with the (fairly legitimate) question of how ‘essential’ an element is to a patented process relative to a rival process where this information isn’t advertised on the face of the patent itself or if there is a factual dispute over the ins and outs of the Defendant process, this decision isn’t particularly helpful in pointing you to answers.
Finally, the Court offers a nod to the expert opinions commissioned by the court of first instance. This, again, is no great leap to make since the experts here were agreed that Natco’s process was materially different from FMC’s. The hard case here, of course, would be to ask what the protocol for weighing expert opinion by an appeals court is in the event the experts disagree or return a split verdict. The Court offers nothing on this since it is not concerned with this (fairly foreseeable) possibility.
In the event, there is no blockbuster finding here. (In fact, there isn’t a tremendous amount to this judgment at all, quite frankly.) That can feel a bit deflating given the potency of the facts to offer up something legally significant. In truth, though, this can often happen when the Court takes on a narrow burden, and that’s fine.
That is to take nothing away from the commercial value of the ruling, on which, I’m sure, there will be comments from observers better qualified than myself.
Legally, though, the Court does what it says on the tin, really.
Nothing less, to be sure, but certainly nothing more.
