AYUSH KUMAR SHARMA

PRN NO 1182190110

MOOT PROBLEM 1

5TH YEAR BBA LLB(HONS)- B

BEFORE THE HONBLE HIGH COURT OF HYDERABAD

UNDER SECTION 48 OF THE INDIAN PATIENT ACT, 1970

IN THE MATTER OF SECTION 64 AND 84 OF THE INDIAN PATIENT
ACT.

M/s. Gooble Ooble Inc. (GO Inc.) ......………………....…………...PETITIONER NO. 1

vs.

M/s. Hoggers Enterprises (HI Inc.)

……………………….............................RESPONDENT

ON SUBMISSION BEFORE THE HON’BLE THE CHIEF JUSTICE OF HIGH COURT

DRAWN AND FILED BY THE COUNSEL

MEMORIAL ON BEHALF OF THE RESPONDENT

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TABLE OF CONTENTS

INDEX OF AUTHORITIES……………………………………………………………...03

STATEMENT OF JURISDICTION…………………………………………………….04

STATEMENT OF FACTS………………………………………………………….....05-06

STATEMENT OF ISSUES.……………………………….……………..........................07

SUMMARY OF ARGUMENTS………………………………………………….08

ARGUMENTS ADVANCED…………………………………………………....…….09-12

PRAYER……………………………………………………………………...…………...12

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INDEX OF AUTHORITIES

1. CASES

1. BISHWANATH PRASAD RADHEY SHYAM V. HINDUSTAN METAL INDUSTRIES

2. WHIRLPOOL CORPORATION V. RAHUL TONDON
3. BAYER CORPORATION V. NATCO PHARMA LTD.
4. KAPIL WADHWA V. SAMSUNG ELECTRONICS CO. LTD.
5. AMIR KHAN PRODUCTIONS PRIVATE LIMITED V. UNION OF INDIA
6. BAYER CORPORATION V. NATCO PHARMA LTD.
7. DELHI HIGH COURT IN ENERCON (INDIA) LTD. V. ENERCON GMBH

2. BOOKS AND STATUTES

THE PATENT ACT, 1970

3. WEBSITES

I. WWW.SCCONLINE.COM

II. WWW.MANUPATRA.CO.IN

III. WWW.WESTLAW.COM

IV. WWW.INDIANKANOON.ORG

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STATEMENT OF JURISDICTION

THE HON'BLE HIGH COURT OF HYDERABAD HAS JURISDICTION TO ADJUDICATE THE

PRESENT SUIT FILED BY GO INC. AGAINST HI UNDER SECTIONS 104 OF THE PATENTS
ACT, 1970 AND SECTION 134 OF THE TRADEMARKS ACT, 1999, AS WELL AS THE

COUNTER CLAIM FILED BY HI FOR REVOCATION UNDER SECTION 64 OF THE PATENTS

ACT. THE INTELLECTUAL PROPERTY APPELLATE BOARD (IPAB) AT CHENNAI HAS

JURISDICTION OVER THE REVOCATION PROCEEDINGS FILED BY HI UNDER SECTION 64 OF

THE PATENTS ACT. THE CONTROLLER OF PATENTS HAS JURISDICTION TO ENTERTAIN

HI'S APPLICATION FOR COMPULSORY LICENSING OF GO INC.'S PATENT UNDER SECTION

84 OF THE PATENTS ACT. THIS MEMORIAL ADDRESSES THE ISSUES RAISED BY THE

PARTIES BEFORE THIS HON'BLE HIGH COURT.

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STATEMENT OF FACTS

BACKGROUND

1. Go Inc., a New Zealand-based manufacturer, holds a patent (no. 23629008) for a

separator apparatus used in pharmaceutical and milk chilling industries.
2. The Go patented separator, marketed under the brand "Fleeto," effectively removes
impurities from raw materials.
3. Go Inc. established an Indian subsidiary, Goil, to market and distribute the separators
in India, demonstrating a commitment to the Indian market.
4. HI, a manufacturer of various machineries, approached go inc. for a license to
manufacture "Fleeto" separators in India due to high demand.
5. Go Inc. rejected HI's request for a manufacturing license, leading HI to produce
similar separators named "Flitu."
6. A Goil technical team discovered instances of patent infringement by HI at Toil
Biscuit products in Mumbai.
7. An investigator appointed by Go Inc. confirmed HI's infringement through interviews,
images, and discussions.
8. Go Inc. issued a cease-and-desist notice to HI and TBL, alleging patent and trademark
infringement.
9. HI and TBL filed a groundless threat proceeding under section 106 of the patent act
before the high court of Mumbai.
10. The High court directed Go Inc. not to issue further groundless threats and mandated
prior notice before filing an infringement suit.
11. HI also filed a revocation proceeding before the intellectual property appellate board
seeking to revoke Go Inc.'s patent.
12. HI approached the controller of patents under section 84 seeking a compulsory license
for Go Inc.'s patent.
13. Go Inc. filed an infringement suit (no. 022/2019) against HI before the jurisdictional
court of the kanga district court.

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14. HI filed a counterclaim seeking patent invalidation and applied for the transfer of the
suit to the High court at Hyderabad under section 104 of the patent act.
15. Go Inc., in compliance with the High court's orders, provided notice of the
infringement suit to HI and TBL and pursued legal action.

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STATEMENT OF ISSUES

[I]. WHETHER HI'S MANUFACTURING AND SELLING OF "FLITU"

SEPARATORS INFRINGES GO INC.'S PATENT RIGHTS FOR "FLEETO"
SEPARATORS UNDER THE INDIAN PATENT ACT, 1970.

[II]. WHETHER THE CLAIM OF HI FOR COMPULSORY LICENSING FROM

GO INC. IS JUSTIFIED; AND WHETHER THE CONTROLLER OF PATENTS IS
JUSTIFIED IN HEARING AND DECIDING SUCH A CLAIM WHEN THE HIGH
COURT IS SEIZED OF THE INFRINGEMENT AND COUNTER CLAIM ISSUES
AND IPAB IS SEIZED WITH REVOCATION ISSUES.

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SUMMARY OF ARGUMENTS

[I]. WHETHER HI'S MANUFACTURING AND SELLING OF "FLITU"

SEPARATORS INFRINGES GO INC.'S PATENT RIGHTS FOR "FLEETO"
SEPARATORS UNDER THE INDIAN PATENT ACT, 1970.

It is humbly submitted before the Hon'ble Court that the respondent denies infringing GO
Inc.'s patent for "FLEETO" separators, contending invalidity due to lack of novelty, inventive
step, and insufficient description. The respondent's "FLITU" separators allegedly do not
infringe when claims are properly construed. The respondent has applied for a compulsory
license, citing GO Inc.'s failure to meet public requirements and provide affordable access,
relying on Bayer v. Natco. The respondent argues GO Inc.'s patent rights are exhausted by
importation and sale in India. The respondent alleges GO Inc. misused its patent by unfair
monopolization and excessive pricing, against public interest.

[II]. WHETHER THE CLAIM OF HI FOR COMPULSORY LICENSING FROM GO

INC. IS JUSTIFIED; AND WHETHER THE CONTROLLER OF PATENTS IS
JUSTIFIED IN HEARING AND DECIDING SUCH A CLAIM WHEN THE HIGH
COURT IS SEIZED OF THE INFRINGEMENT AND COUNTER CLAIM ISSUES
AND IPAB IS SEIZED WITH REVOCATION ISSUES.

It is humbly submitted before the Hon'ble Court that the respondent's request for a
compulsory license from GO Inc. is grounded in the stipulations of the Indian Patent Act,
1970. Specifically, Section 84 empowers the Controller of Patents to grant such a license
when the public's reasonable needs are unmet or when a patented invention is not affordably
accessible. The demand for GO Inc.'s "FLEETO" separators far exceeds the supply, coupled
with its prohibitive pricing, which compromises public health access to essential products.
This situation mirrors the precedent set by the Bayer Corporation v. Natco Pharma Ltd.,
where a compulsory license was granted under similar circumstances. Moreover, the
respondent argues that the Controller retains the authority to issue a compulsory license
regardless of ongoing infringement or revocation litigations, a standpoint supported by the

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Enercon (India) Ltd. v. Enercon GmbH case. Thus, the plea for a compulsory license is
substantiated by both statutory provisions and judicial precedent, emphasizing the
mechanism's role in protecting public interest and ensuring accessibility to patented
innovations.

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ARGUMENTS ADVANCED

[I]. WHETHER HI'S MANUFACTURING AND SELLING OF "FLITU" SEPARATORS

INFRINGES GO INC.'S PATENT RIGHTS FOR "FLEETO" SEPARATORS UNDER THE
INDIAN PATENT ACT, 1970.

It is humbly submitted before the hon’ble court that the respondent, M/s. Hoggers Enterprises
(hereinafter referred to as HI), has not infringed upon the patent rights of the petitioner, M/s.
Gooble Ooble Inc. (hereinafter referred to as GO Inc.) 1, in respect of the patent No. 23629008
for the "FLEETO" separator apparatus. HI contends that the alleged infringement is baseless
and unfounded, and the petitioner's claims are untenable both in fact and in law.

The respondent respectfully submits that the patent in question is invalid and liable to be
revoked on several grounds specified under Section 64 of the Indian Patent Act, 1970. The
claimed invention lacks novelty and inventive step over the prior art, rendering it obvious to a
person skilled in the art. This ground is supported by the decision in Bishwanath Prasad
Radhey Shyam v. Hindustan Metal Industries (1982 AIR 1444), wherein the Supreme Court
held that a patent can be revoked if the invention lacks novelty or is obvious to a person
skilled in the art. Furthermore, the patent specification lacks sufficient description to enable a
person skilled in the art to carry out the invention, as held in Biswanath Prasad Radhey
Shyam v. Hindustan Metal Industries (AIR 1979 SC 1901).

Moreover, the respondent's "FLITU" separators do not infringe the patent claims of GO Inc.
when the claims are properly construed and interpreted. The "FLITU" separators fall outside
the scope of the claims and do not incorporate all the essential features of the claimed
invention. The respondent relies on the well-established principles of claim construction and
the doctrine of non-infringement, as enunciated in Whirlpool Corporation v. Rahul Tondon
(2013 (55) PTC 446 (Del)2), wherein the court emphasized the importance of properly
construing the claims to determine infringement.

1
Bishwanath Prasad Radhey Shyam vs. Hindustan Metal Industries (1979)

2
Whirlpool Corporation v. Rahul Tondon (2013 (55) PTC 446 (Del)

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Additionally, the respondent has applied for a compulsory license from the Controller of
Patents under Section 84 of the Indian Patent Act, 1970, on the grounds that GO Inc. has
failed to meet the reasonable requirements of the public with respect to the patented product,
and that the patented product is not available to the public at a reasonably affordable price.
This ground finds support in the landmark case of Bayer Corporation v. Natco Pharma Ltd.
(2013 (55) PTC 575 (Bom)), wherein the court granted a compulsory license to Natco
Pharma on similar grounds. GO Inc.'s actions have limited access to quality drugs and milk
products for the general public, adversely affecting public health.

The respondent may argue that GO Inc.'s patent rights have been exhausted since GO Inc. has
already imported and sold the "FLEETO" separators in India. Under Section 107A(b) of the
Indian Patent Act, 1970, the rights of a patentee are exhausted after the patented product has
been put on the market by the patentee or with their consent. This principle is supported by
the decision in Kapil Wadhwa v. Samsung Electronics Co. Ltd. (2013 (55) PTC 120 (Del) 3),
wherein the court recognized the doctrine of exhaustion of rights.

The respondent can contend that GO Inc. is misusing its patent rights by unfairly
monopolizing the market and charging exorbitant prices for the "FLEETO" separators, which
are essential for the pharmaceutical and dairy industries. This argument finds support in the
case of Amir Khan Productions Private Limited v. Union of India (AIR 1986 SC 667),
wherein the Supreme Court emphasized that patent rights should not be used in a manner that
goes against public interest.

[II]. WHETHER THE CLAIM OF HI FOR COMPULSORY LICENSING FROM GO INC. IS

JUSTIFIED; AND WHETHER THE CONTROLLER OF PATENTS IS JUSTIFIED IN
HEARING AND DECIDING SUCH A CLAIM WHEN THE HIGH COURT IS SEIZED OF
THE INFRINGEMENT AND COUNTER CLAIM ISSUES AND IPAB IS SEIZED WITH
REVOCATION ISSUES.

It is humbly submitted before the Hon'ble Court that the respondent's claim for compulsory
licensing from GO Inc. is justified and in line with the provisions of the Indian Patent Act,
1970, and the principles enunciated by the courts in various landmark judgments.

Section 84 of the Indian Patent Act, 1970, empowers the Controller of Patents to grant a
compulsory license on any of the grounds specified therein, including:

3
Kapil Wadhwa v. Samsung Electronics Co. Ltd. (2013 (55) PTC 120 (Del)

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a) That the reasonable requirements of the public with respect to the patented invention have
not been satisfied (Section 84(1)(a)), and b) That the patented invention is not available to the
public at a reasonably affordable price (Section 84(1)(b)).

In the present case, the respondent has applied for a compulsory license on the grounds that
GO Inc. has failed to meet the reasonable requirements of the public, as evidenced by the
significant demand-supply gap (20 lakh units demanded, but only 2 lakh units supplied).
Additionally, GO Inc.'s exorbitant pricing of the "FLEETO" separators ($ 40,000 or approx.
Rs. 24 lakhs per unit) makes the patented product inaccessible to the general public, limiting
their access to quality drugs and milk products, and adversely affecting public health.

The respondent's claim for a compulsory license finds strong support in the landmark case 4 of
Bayer Corporation v. Natco Pharma Ltd. (2013 (55) PTC 575 (Bom), wherein the Bombay
High Court granted a compulsory license to Natco Pharma for Bayer's patented cancer drug,
Sorafenib Tosylate, on similar grounds. The court held that Bayer's prohibitively high pricing
and insufficient supply had failed to meet the reasonable requirements of the public, thereby
justifying the grant of a compulsory license.

Furthermore, the respondent submits that the Controller of Patents is well within their
jurisdiction to hear and decide the respondent's claim for a compulsory license, even while
the High Court and IPAB are seized with the infringement and revocation issues,
respectively.

Section 84(3) of the Indian Patent Act, 1970, expressly states that the Controller's power to
grant a compulsory license is not affected by the pendency of any other proceedings,
including infringement or revocation proceedings. This provision ensures that the public
interest in accessing essential patented products is not unduly hampered by concurrent legal
proceedings.

This position finds support in the decision of the Delhi High Court in Enercon (India) Ltd. v.
Enercon GmbH (2014 (59) PTC 281 (Del) 5), wherein the court held that the Controller of
Patents has the jurisdiction to grant a compulsory license even if infringement or revocation
proceedings are pending before other forums. The court emphasized that the compulsory

4
Bayer Corporation v. Natco Pharma Ltd. (2013 (55) PTC 575 (Bom)
5
Enercon (India) Ltd. v. Enercon GmbH (2014 (59) PTC 281 (Del)

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licensing mechanism is an independent statutory remedy aimed at safeguarding public

interest and promoting access to patented products.

Therefore, the respondent humbly submits that their claim for a compulsory license is
justified and well-grounded in the provisions of the Indian Patent Act, 1970, and the
jurisprudence developed by the courts. Furthermore, the Controller of Patents is empowered
to hear and decide the compulsory licensing claim, notwithstanding the pendency of
infringement and revocation proceedings before other forums.

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PRAYER

Wherefore, in light of the issues raised, arguments advanced, and authorities cited, may this
Hon’ble Court be pleased to adjudge, hold and declare:
1. To dismiss the infringement suit, declare the patent invalid and hold non-
infringement
2. To direct grant of compulsory license, affirm Controller's jurisdiction, and declare
exhaustion of patent rights.
3. To hold patent misuse by the petitioner, award costs, and grant further reliefs.
And pass any order, direction or relief that this Honorable Court deem fit in the interest of
justice equity and good conscience.

AND/OR

Pass any other Order, Direction, or Relief that this Hon’ble Court may deem fit in the

interests of justice, equity and good conscience.

For this act of Kindness, the Petitioner, as in duty bound, shall humbly pray.

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