Albemarle v. Controller: Delhi High Court Upholds Right to Narrow Claims on Appeal
Background
Albemarle Corporation, a US-based company, filed an appeal under Section 117A of the Indian Patents Act, 1970, against the Controller of Patents’ decision dated 12th May 2021, which refused Indian Patent Application No. 2897/DELNP/2012. The refusal was under Section 15 of the Patents Act, on the grounds that the subject matter of the claims was not patentable.
Facts:
The appellant filed the application on 04th April 2012. A First Examination Report was issued on 26th October 2017, raising several objections. The appellant responded on 21st March 2018, and attended hearings on 19th October 2020, and 23rd February 2021. Written submissions were also filed on 06th October 2020, 03rd November 2020, and 10th March 2021.
The application was refused, leading to the present appeal. Instead of contesting the refusal on merits, the appellant, Albemarle, submitted amended claims, narrowing the invention to a process for cleaning polyurethane foam, and filed I.A. No. 35045/2024 to place the auxiliary claim set on record for expeditious disposal.
Legal Analysis:
The central legal issue was whether amendments to patent claims are permissible at the appellate stage. The Court examined Chapter X (Sections 57 to 59) of the Patents Act, which governs amendments to patent applications and specifications. Importantly, Section 59 permits amendments as long as the revised claims do not broaden the scope or introduce subject matter not already disclosed in the original application.
The Court observed that the Act does not specifically prohibit amendments at the appeal stage. It clarified that amendments that restrict or narrow claim scope (rather than broaden it) to address patent office objections are permissible even during appeal proceedings, provided they comply with statutory requirements. In this case, Albemarle’s amendments merely reduced the scope of the claims without introducing new material; the claims remained within the boundaries of the original disclosure and were narrowed to a process.
Decision of the Court
The Delhi High Court allowed Albemarle’s request to amend the claims during the appeal. The Court held that such auxiliary claim amendments were permissible under Section 59 of the Patents Act since they narrowed the claims’ scope and did not add new matter. Accordingly, the Court remanded the matter to the Patent Office for fresh consideration of the application based on the amended claim set. The Controller was ordered to complete the re-examination within six months from receipt of the order.
This decision reaffirms the right of patent applicants in India to submit claim amendments at the appellate stage, provided such amendments do not extend beyond the original disclosure and only restrict, not enlarge, the scope of claims.
Zydus’ Biosimilar Drug Blocked: Bolar Exemption Defense Fails in Nivolumab Patent Dispute
In a significant ruling, the Delhi High Court has granted interim relief to E.R. Squibb & Sons LLC, Ono Pharmaceutical Co. Ltd., and BMS India (“the Plaintiffs”) in their patent dispute with Zydus Lifesciences Limited (“the Defendant”). The Court restrained Zydus from manufacturing, selling, importing, or otherwise dealing with its proposed biosimilar of Nivolumab (marketed in India as Opdyta®), citing potential infringement of the Plaintiffs’ Indian Patent No. IN 340060, which is set to expire on May 2nd 2026.
Background:
The dispute originated when the plaintiffs discovered that Zydus had sought regulatory approval from the Central Drugs Standard Control Organisation (CDSCO) for a biosimilar drug referencing Nivolumab as the comparator product. Concerned that Zydus would proceed with a commercial launch before patent expiry, the plaintiffs issued a cease-and-desist notice. Zydus responded by asserting that its activities were shielded by India’s Bolar exemption (Section 107A of the Patents Act), as its actions were allegedly limited to regulatory and research purposes.
Contentions:
The plaintiffs argued that Zydus’ biosimilar drug directly overlapped with the patented claims, including specific antibody sequences, and that the defendant’s conduct risked imminent market entry and infringement. In response, Zydus contended that its biosimilar drug differed from the patented molecule, challenged the validity of the suit patent on grounds of lack of novelty and inventive step, and further asserted that all its activities fell within the scope of the Bolar exemption.
Court’s Findings:
Justice Mini Pushkarna found that the plaintiffs had established a strong prima facie case of infringement and highlighted the irreparable harm that would result from a premature generic entry. The court noted Zydus had not presented a credible challenge to patent validity nor sufficiently demonstrated that its activities were strictly confined to regulatory use. Accordingly, an interim injunction was granted, restraining Zydus from any commercial or stockpiling activity related to its Nivolumab biosimilar for the remaining life of the patent. Additionally, Zydus was directed to file an affidavit disclosing any quantities of the infringing product that may have been manufactured.
Implications:
The court’s approach, particularly in its broad reading of infringement and the limited protection accorded to the Bolar exemption, marks a decisive affirmation of innovator rights, with far-reaching consequences for future biosimilar launches in India. The order has been appealed, but the Division Bench has thus far declined to stay the injunction, keeping the matter pending for further hearing.
Conclusion:
This case sets an important precedent regarding patent protection, the boundaries of the Bolar exemption, and the regulation of biosimilars in India. Innovator companies and generic manufacturers alike are advised to closely follow the ongoing proceedings given their potential impact on market strategy and intellectual property enforcement.
Simplicity Doesn’t Preclude Patentability: Dong Yang Pc, Inc. vs Controller of Patents and Designs
On 1st July 2025, the Delhi High Court, presided by Justice Mini Pushkarna, adjudicated the appeal filed by Dong Yang PC, Inc. challenging the order of the Controller of Patents and Designs, which had rejected the appellant’s patent application for a “Vertical Rotary Parking System” on grounds of lacking inventive step and refused permission to amend the specification.
Background:
Dong Yang PC, Inc. had filed its Indian Patent Application (No. 2554/DEL/2013) on 29th August 2013 for an innovation designed to maximize parking in constrained spaces. A pre-grant opposition was lodged, and, just prior to the hearing, an additional prior art document (D-5), which was not cited originally, was introduced by the opponent. Despite the opponent’s absence at the hearing, the Controller relied on D-5 to reject the application as lacking inventive step and being merely a workshop modification of the earlier design. The Controller also denied Dong Yang’s request to amend its specification and issued the impugned order.
Contentions:
Dong Yang PC, Inc. contested that even simple innovations can be patentable if they present a technical advancement or economic significance, regardless of simplicity. Further, the refusal to allow the specification amendment (in response to the late introduction of D-5) violated the principles of natural justice, depriving the applicant of a fair opportunity to clarify technical advancements over the prior art. Besides, the Controller’s finding of obviousness was unsupported by appropriate technical reasoning or documentation.
The Controller contended that the modification, interchanging coupling elements, was mechanical and obvious, failing to represent any technical improvement over D-5. The Controller also questioned the applicant’s entitlement to amend the specification at a late stage.
Court’s Findings:
The court at the outset noted that simplicity alone does not preclude patentability. Modifications that result in discernible improvements, reduced noise, increased safety, and lower friction can constitute inventive steps. The Controller’s order lacked sound reasoning as to why the invention did not involve a technical advancement. Crucially, refusal to permit amendment of the patent specification (in response to newly cited prior art) breached procedural fairness. The applicant possesses the right to address objections via amendment when new prior art emerges during prosecution. The Controller provided no substantive evidence to support the finding that the invention was not patentable.
Decision:
The Court set aside the Controller’s order and restored Dong Yang’s patent application. The matter was remanded for a de novo hearing by a different officer, with strict directions for a reasoned and unbiased decision within four months. The Court also reaffirmed that post-filing technical evidence and reasonable amendments are admissible if consistent with the original disclosure.
Implications:
This judgment reinforces that simple inventions are not categorically excluded from patent protection, provided they yield technical or economic value. The ruling underscores the right to procedural fairness, specifically, the applicant’s entitlement to amend specifications in response to late-emerging prior art. This case stands as a key precedent for applicants seeking to protect incremental but genuinely innovative improvements, especially in mechanical and engineering domains.
Dolby International AB & Anr. v. Lava International Limited : Indian Court Issues Key Ruling on SEP Licensing
The Delhi High Court delivered a significant ruling in the ongoing patent dispute between Dolby International and Lava International Limited concerning standard essential patents (SEPs) covering advanced audio coding (AAC) technology implemented in Lava’s mobile devices. This judgment marks an important development in the Indian SEP enforcement landscape and is poised to influence FRAND (Fair, Reasonable, and Non-Discriminatory) licensing practice.
Background:
Dolby filed a suit against Lava, asserting eight patents from its AAC portfolio, five of which had expired during the protracted six-year licensing negotiations. Dolby licenses these SEPs both bilaterally and through the Via LA Licensing pool. While engaging in discussions, Dolby alleged that Lava continued to manufacture and sell infringing devices without obtaining a license or paying royalties, despite being offered both individual and pool licensing arrangements. The court noted that several market competitors, including Oppo and Vivo, had concluded licenses with Dolby.
Parties’ Contentions:
Dolby argued that Lava persistently avoided engaging in good faith negotiations, displaying ‘patent holdout’ tactics: making excessive information demands, failing to propose quantifiable licensing terms, and only furnishing a counteroffer after litigation commenced. Lava, in its defence, contended that most of the asserted patents had expired before the suit and disputed both the essentiality and validity of the remaining patents, arguing that Dolby was not entitled to royalties for expired patents.
Court’s Findings:
Justice Amit Bansal emphasized that even for expired patents, patentees are entitled to claim royalties on past infringing sales. The Court found that Dolby had presented claim-chart mapping that established prima facie essentiality and that Lava’s devices were AAC compliant, a fact Lava itself admitted. The Judge described Lava’s conduct as that of an ‘unwilling licensee,’ undermining FRAND principles and gaining an unfair market advantage over compliant licensees.
Accordingly, the Court ordered Lava to deposit a sum of ₹20.03 crore (approximately $2.3million) as interim security calculated to cover unpaid royalties for its past sales from 2019 to 2024 within eight weeks – For all subsequent sales, Lava must continue to deposit amounts or furnish bank guarantees as per the rates directed by the Court. Failure to comply would entitle Dolby to seek an interim injunction restraining Lava from further sales of infringing devices in India.
Implications:
This order is a strong affirmation of the rights of SEP holders and underscores the requirement for implementers to engage in genuine FRAND negotiations. It deters patent holdout strategies and ensures patentees receive interim security pending the final outcome of litigation. The decision is anticipated to reshape SEP/FRAND enforcement and licensing practice in India, highlighting the judiciary’s support for swift interim relief in ongoing SEP disputes.
Delhi High Court Orders Unprecedented Security in Cross-Border Patent Dispute
The present case, ‘Communication Components Antenna Inc. v. Ace Technologies Corp. & Ors.’ sets new standards for risk mitigation and strategic planning in patent litigation involving foreign entities in India. IP holders and multinational defendants alike are urged to factor in these evolving judicial strategies, as the Indian courts signal strong protection for patent rights and the practical enforceability of judgments in technology disputes.
Background:
CCA sued Ace Technologies and its group companies for the manufacture and sale of antenna products to Reliance Jio that allegedly embody the patented features. With Ace conducting substantial business in India via its local subsidiaries, CCA raised concerns about difficulties in enforcement, noting Ace’s limited assets in India and the absence of a reciprocal enforcement treaty between India and South Korea.
Contentions:
CCA asserted that wilful infringement of its patent, detailed significant damages, and emphasized high risks of unenforceable judgments due to Ace’s diminishing Indian footprint and asset depletion. CCA sought substantial security for its damages claims as interim relief and highlighted a decline of nearly 65% in Ace’s valuation.
In response, Ace Technologies challenged the need for further security, disputed the extent of alleged infringement, and maintained that earlier deposits sufficed. Ace also cited cessation of Indian operations and denied active business.
Court’s Findings:
Justice Saurabh Banerjee, invoking inherent powers under Section 151 of the Civil Procedure Code, reaffirmed the need to maintain effective remedies against foreign defendants in Indian IP disputes. The Court found CCA had established a strong prima facie case of infringement, supported by prior interim findings undisturbed at the appellate and Supreme Court levels. The defendants were directed to deposit an amount equivalent to 25% of the total damages claimed—i.e., Rs. 290 Crores out of Rs. 1160 Crores (approximately USD 140 million)—either by way of a bank guarantee issued by a scheduled commercial bank or in the form of a fixed deposit receipt in the name of the Registrar General of the Court, within a period of four weeks. This is in addition to any amounts already deposited by the defendants pursuant to earlier court orders.
Implications:
This decision demonstrates judicial willingness to grant robust interim relief to patentees facing cross-border enforcement risks and raises the bar for foreign defendants lacking sufficient Indian assets. The order solidifies key principles of cross-border patent enforcement, procedural fairness, and security jurisprudence under Indian law. It also marks a turning point for high-value IP disputes, providing a model for protective relief that bridges the gap in international enforcement.
