by Sutapa Jana
In the case of Onyx Therapeutics Inc v Union of India , a Division Bench of the Delhi High Court vide its order dated September 26, 2019 held that once the Patentee has filed its reply-statement, the Patentee is not required to provide any separate reasons for cross-examination of the witnesses whose affidavits are filed by the Opponent in support of its Post-grant Opposition. The objections in the reply-statement are the reasons for seeking cross-examination.
Facts of the Case
The Appellant, Onyx Therapeutics Inc., filed an international application under the Patent Cooperation Treaty bearing No. PCT/US05/012740 dated April 14, 2005 and pursuant thereto, filed an application under Section 7(1A) of the Patents Act, 1970 (hereinafter referred to as the “Act”) on September 27, 2006 bearing No. 5644/DELNP/2006, seeking a patent in India based on aforesaid international application. Thereafter, the said patent application was duly examined under the Act and the Indian Patent Office proceeded to grant a patent bearing no. 255964 (hereinafter referred to as “IN ‘964”), on April 09, 2013.
Later, the Appellant received a post-grant opposition from the Third Respondent, Fresenius Kabi Oncology Ltd (hereinafter referred to as the “Opponent”). The opposition by the Third Respondent was supported by the affidavit of an expert, Dr. Surajit Sinha. In response to the same, the Appellant filed a reply-statement under Rule 58 of the Rules without any affidavit in evidence and also sought permission from the second Respondent, the Deputy Controller of Patents and Designs (hereinafter referred to as the “Deputy Controller”), to cross-examine Dr. Surajit Sinha. Meanwhile, the Opponent prayed to place on record additional evidence affidavits of a new expert Dr. Prachi Tiwari and a second affidavit of Dr. Surajit Sinha. The Opponent also filed a second affidavit of Dr. Prachi Tiwari challenging the validity of IN ‘964.
Thereafter, the Deputy Controller forwarded a copy of the recommendation of the Opposition Board constituted under Section 25(3) of the Act. The list of documents considered by the Opposition Board included the evidence affidavits of both Dr. Surajit Sinha and Dr. Prachi Tiwari. In response to the aforesaid email of the Deputy Controller, the Appellant requested cross-examination of Dr. Surajit Sinha and Dr. Prachi Tiwari and that the hearing be deferred until then. The Deputy Controller accepted the said request and directed the Opponent to notify the date on which the witnesses will be made available for cross-examination, before the hearing date.
Subsequently, the Opponent raised objections that the Appellant was required to move a formal application to this effect. Thereafter, the Deputy Controller directed the Appellant to file a formal petition for cross-examination. However, immediately thereafter, the Deputy Controller on his own denied the request for cross examination and intimated that a hearing on merits would take place as scheduled.
Aggrieved by the said order of the Deputy Controller, the Appellant filed a writ petition before the High Court of Delhi. The Ld Single Judge allowed the writ petition of the Appellant and permitted the Appellant to cross-examine the expert witnesses of the Opponent, but imposed a pre-condition that the Appellant would first file affidavit in evidence of its expert witnesses controverting the opinions of the expert witnesses of the Opponent. In view of the said pre-condition, the Appellant preferred a Letters Patent Appeal before the Division Bench with a limited relief that the pre-condition imposed by the Single Judge be set aside. The Opponent also preferred a Letters Patent Appeal before the Division Bench seeking quashing of the order of the Single Judge.
Contentions of the Parties before the Division Bench
The Appellant’s primary contention was that cross-examination of the witnesses led by the Opponent had to be allowed, independent and irrespective of whether any affidavit in evidence was tendered by the Appellant or not. Moreover, the Appellant contended that it was not required to cite any grounds or reasons to justify its request to cross examine the witnesses since the reply statement filed by the Appellant under Rule 58 itself constituted the reason for seeking the cross-examination of experts. It was also contended by the Appellant that while reasons for cross-examination were in-built in the reply statement, a separate application for cross-examination was also filed by the Appellant.
The Appellant further contended that the veracity of the claims made by the experts in the affidavit can be established only through cross-examination, and therefore, the same should be treated as a rule and not as an exception. The same also facilitates the Deputy Controller to adjudicate the Opposition. Therefore, the Appellant claimed that the cross examination ought to have been allowed by the Deputy Controller in the interest of justice.
Further, the Appellant argued that the above-mentioned aspects were not properly appreciated by the Single Judge while allowing conditional cross-examination. Therefore, it was prayed by the Appellant that the judgement and the order of the Single Judge is required to be modified and cross-examination of the experts must be allowed without any pre-conditions.
The Opponent, on the other hand, argued that the Single Judge erred in permitting the Appellant the right to cross-examination because the proceedings before the Deputy Controller were not judicial but inquisitorial in nature. More so, no reasons were pleaded by the Appellant while seeking the cross-examination of the Opponent’s witnesses.
The Opponent further argued that by virtue of a grant of the suit patent, monopoly was created in favour of the Appellant, against which the Opponent filed its objections along with its expert affidavits and therefore, the Deputy Controller was entitled to evaluate the objections of Opponent without the Appellant being permitted to cross-examine its experts. Lastly, it was argued that permitting cross-examination is the discretionary power of the Deputy Controller and there exist no vested right in the Appellant to cross-examine the experts whose affidavits have been relied upon by the Opponent. Since the Deputy Controller had denied the request of the Appellant, the same ought not to be interfered.
Decision of the Division Bench
Firstly, the Court upheld the decision of the Single Judge to grant the request of the Patentee to cross examine the witnesses of the Opponent. However, it was observed that no pre-condition should have been attached to the said order. The Division Bench held that when a request for cross-examination of the Opponent’s witnesses is made by the Patentee, the said request should be allowed when objections in the form of reply-statement are already filed by the Patentee under Rule 58 of the Rules.
Secondly, the Division Bench observed that there is no need for the Patentee to give separate reasons to avail the right of cross-examination of the Opponent’s witnesses, as defence of the Patentee may not be disclosed. The objections, i.e. the reply-statement filed under Rule 58 of the Rules are the reasons for the cross-examination of the witnesses. The Court reasoned that cross-examination is necessary since it is the only way to demolish the claims made by the Opponent’s witness. Therefore, it was held that filing objections in the form of reply-statement under Rule 58 of the Patent Rules will be sufficient to avail of the right of cross-examination. Thus, it is not necessary to make it conditional upon the filing of an evidence affidavit by the Patentee.
Thirdly, it was also observed that under Section 77 of the Act, the Deputy Controller exercises the power of a Civil Court and thus, on conjoint reading of Section 77 with Section 79 of the Act and Rules 55A, 56, 57, 58 and 59 of the Rules, there is no need for the Patentee to give separate reasons for seeking cross-examination of the witnesses whose affidavits are being relied upon by the Opponent. It was also observed that though the word “may” has been used in Section 77 of the Act, it must be borne in mind that, when the Opponent places reliance upon the evidence given by the witnesses in a post-grant opposition proceeding, then, cross-examination should be allowed for the reasons as stated in the reply statement filed by the Patentee under Rule 58.
Finally, it was observed that cross-examination of the witnesses is a touchstone for the examination-in-chief which is in the form of affidavit. Therefore, cross-examination will only facilitate the Deputy Controller to arrive at the decision in an opposition proceeding. Further, such cross-examination will not be prejudicial to the Opponent.
This case, thus, recognized the right of one party to cross-examine the experts whose affidavits are filed by the Opponent/other party in a post-grant opposition. If a Patentee has filed the reply statement under Rule 58, the Patentee is not required to give separate or additional reasons to exercise this right. Further, under Section 77 of the Act discretionary power of allowing cross-examination is already vested with the Controller, and accordingly, the same should be allowed by the Controller when a reply-statement under Rule 59 of the Rules has been filed by the Patentee and the Opponent seeks to rely on.
[The author is a Senior Associate in the IPR practice in Lakshmikumaran & Sridharan, New Delhi]