FAO(OS) (COMM) 204/2025 Page 1 of 34

$~

* IN THE HIGH COURT OF DELHI AT NEW DELHI

Reserved on: 19 January 2026

Pronounced on: 9 March 2026

+ FAO(OS) (COMM) 204/2025 & CM APPL. 78607/2025

NOVO NORDISK A/S .....Appellant

Through: Mr. Hemant Singh, Ms. Mamta

Jha, Mr. Rishabh Paliwal, Mr. Shreyansh

Gupta, Mr. Sanchit Sharma, Advs.

versus

DR REDDYS LABORATORIES LIMITED & ANR.

.....Respondents

Through: Mr. Gopal Subramanium, and

Mr. J. Sai Deepak, Sr. Advs. with Mr. Mohit

Goel, Mr. Sidhant Goel, Mr. Aditya Goel,

Mr. Deepankar Mishra, Mr. Kartikeya

Tandon, Mr. Pavan Bhushan, Mr. Avinash

Sharma, Mr. Raghav Kohli, Mr. Adnan

Yousuf and Mr. Ankit Malhotra, Advs.

CORAM:

HON'BLE MR. JUSTICE C. HARI SHANKAR

HON'BLE MR. JUSTICE OM PRAKASH SHUKLA

JUDGMENT

% 09.03.2026

C. HARI SHANKAR, J.

A. Some prefatory thoughts

1. This case makes us ponder, and we have said so in open Court.

FAO(OS) (COMM) 204/2025 Page 2 of 34

2. The dispute relates to a patent held by the appellant for

Semaglutide, which is an anti-diabetic. The appellant claims that, in

December 2024, it came to learn that the respondents were importing

Semaglutide. On the ground that said import infringed the appellant’s

patent, the suit, from which this appeal emanates, came to be instituted

only in 2025. The suit was accompanied, as such suits always are,

with an application seeking an interlocutory injunction restraining the

respondents from manufacturing or selling Semaglutide in the Indian

market. That application was rejected by the learned Single Judge on

2 December 2025, by a detailed and well-reasoned judgment. The

appellant is in appeal.

3. Thus far, we have no issue. What perturbs us is the fact that this

appeal has been preferred when the suit patent itself is to expire on 20

March 2026. On the date when this appeal was argued before us, and

judgment was reserved, a little over two months remained, for the suit

patent to expire. It is not the appellant’s case that the respondent is

manufacturing sub-standard drugs. In any event, after 20 March 2026,

the appellant would no longer be able to enforce the suit patent, and it

would be open to exploitation by the world at large.

4. What irreparable loss, we ask ourselves, is the appellant

suffering, as a result of the impugned judgment? Why, for that matter,

should we even spend valuable time of the Court when a mere two

months were left for the suit patent to expire? When Courts are

inundated with cases, of far greater urgency, which it has no time to

decide, should we at all entertain such an appeal? Is the appeal not

FAO(OS) (COMM) 204/2025 Page 3 of 34

liable to be dismissed even on the principles of balance of

convenience and irreparable loss, de hors the merits of the case?

5. At the highest, even if the appellant were to succeed, it would

have, to its credit, only a prima facie view in its favour. The opinions

we express would have no impact on the adjudication of the lis in the

suit. Why, then, should we express them at all?

6. This case, at least, relates to drugs. We have, before us, appeals

involving patent claims relating to far more pedestrian products, in

which interlocutory orders, under Order XXXIX of the CPC

1

, are

challenged. It is clear, to us, that the case does not involve any issue

of urgency, much less pressing urgency. And yet, such appeals are

argued for hours at a stretch, holding up, in the process, matters,

perhaps relating to the poor and needy, who may be waiting for years

without a job or means to fend for themselves and their families,

waiting for justice.

7. We wonder - if such persons could access the Court proceedings

– as, now, everyone can – and were to notice how Courts hear matters,

which are of no serious moment to either party or to the public at

large, for hours at a stretch, while they keep waiting, what would they

think? We can claim to be abiding by our oath of office only when we

can ensure that justice percolates down to the little man and his small

family, huddled beneath a torn blanket under the ramshackle railway

bridge, in the chilly winter night.

1

Code of Civil Procedure, 1908

FAO(OS) (COMM) 204/2025 Page 4 of 34

8. We are not, by these observations, seeking to run down

commercial or, for that matter, intellectual property litigation. We

agree that there may be cases which are of considerable moment.

Infringement of a patent relating, for example, of a part which has to

go into an aircraft, may be an extremely serious matter, as a duplicate

part could endanger the lives of thousands. Equally, for example, trade

mark infringement cases involving persons who sell duplicate drugs,

imitating the registered trade marks of others, may require expeditious

adjudication. For that matter, every person is entitled, in law, to assert

his intellectual property rights. Even so, at some stage, however,

sifting of the matters is, to our mind, essential.

9. We also understand the importance of ensuring the protection of

patent rights, especially in the case of pharmaceutical preparations,

and the disincentivisation to invent which may result, if such rights are

not safeguarded. A pre-eminent element of public interest also exists

in ensuring that scientists must be encouraged to invent.

10. We reiterate that our concern is only with a case such as this, in

which only two months were left for the suit patent to expire even

when we reserved judgment. No one, therefore, would stand to

benefit, even if we were to injunct the respondents for two months.

Would the interests of justice, in such a case, be not sufficiently

safeguarded by directing the respondents to maintain accounts of the

returns from sale of the allegedly infringing drug, for these two

months?

FAO(OS) (COMM) 204/2025 Page 5 of 34

11. We sincerely feel that, in such cases, the Court must, apart from

addressing itself to the merits of the matter, also consider whether,

applying the principles of balance of convenience and irreparable loss,

it should interfere. This is especially so as, in Wander Ltd v. Antox

(India) Pvt Ltd

2

and Pernod Ricard v. Karanveer Singh Chhabra

3

,

the Supreme Court has clearly held that such appeals are merely

appeals on principle, and that the appellate Court should not disturb

the findings of the Commercial Court, unless they err on principle.

12. Nonetheless, we heard these matters, and reserved judgment

and are, therefore, duty bound to render judgment as well. We,

therefore, proceed to do so. However, we do not intend, in the

circumstances, this to be a de novo examination of the merits of the

appellant’s claim for injunction. We will remain strictly within the

Wander confines.

B. The Statute

13. Though the Patents Act, 1970

4

does not define “infringement”,

it does refer to it, and it is accepted, in law, that the proscriptions to

which Section 48

5

of the Act refers are the acts which, if committed,

would amount to infringement.

2

1990 Supp SCC 727

3

2025 SCC OnLine SC 1701

4

“the Act” hereinafter

5

48. Rights of patentees.—

Subject to the other provisions contained in this Act and the conditions specified in Section 47, a

patent granted under this Act shall confer upon the patentee—

(a) where the subject-matter of the patent is a product, the exclusive right to prevent third

parties, who do not have his consent, from the act of making, using, offering for sale, selling or

importing for those purposes that product in India;

(b) where the subject-matter of the patent is a process, the exclusive right to prevent third

parties, who do not have his consent, from the act of using that process, and from the act of using,

FAO(OS) (COMM) 204/2025 Page 6 of 34

14. Section 64 enlists the circumstances in which a granted patent

can be revoked. The opening words of Section 64 make it clear that a

patent may be revoked on any of the grounds enlisted in the clauses

which follow, which indicates that each ground, independently,

constitutes a ground for revocation. Section 107(1)

6

provides that

every ground on which a patent may be revoked under Section 64

shall be available as a ground of defence in any infringement suit. It is

also settled that, at the Order XXXIX stage, the defendant is only

required to set up a credible challenge to the validity of the suit patent,

on any one or more of the grounds contained in Section 64, to escape

an injunction. The Court is not required to delve deep into the merits

of the challenge at that stage, and has only to satisfy itself that the

defendant has made out a case of vulnerability of the suit patent to

revocation under Section 64. This position is classically captured in

the following passage from the judgment of the Division Bench of this

Court in F. Hoffmann-La Roche Ltd v. Cipla Ltd

7

:

“55. The question before this Court is when can it be said that

the defendant has raised a credible challenge to the validity of a

patent held by the plaintiff in an infringement action? During the

course of the argument it was suggested by counsel that the

challenge had to be both strong and credible. Also, the defendant

resisting the grant of injunction by challenging the validity of the

patent is at this stage required to show that the patent is

“vulnerable” and that the challenge raises a “serious substantial

question” and a triable issue. Without indulging in an exercise in

semantics, the Court when faced with a prayer for grant of

injunction and a corresponding plea of the defendant challenging

the validity of the patent itself, must enquire whether the defendant

has raised a credible challenge. In other words, that would in the

offering for sale, selling or importing for those purposes the product obtained directly by that

process in India:

6

107. Defences, etc. in suits for infringement.—

(1) In any suit for infringement of a patent, every ground on which it may be revoked under

Section 64 shall be available as a ground for defence.

7

159 (2009) DLT 243 (DB), referred to, hereinafter, as Roche-I

FAO(OS) (COMM) 204/2025 Page 7 of 34

context of pharmaceutical products, invite scrutiny of the order

granting patent in the light of Section 3(d) and the grounds set out

in Section 64 of the Patents Act 1970. At this stage of course the

Court is not expected to examine the challenge in any great detail

and arrive at a definite finding on the question of validity. That will

have to await the trial. At the present stage of considering the grant

of an interim injunction, the defendant has to show that the patent

that has been granted is vulnerable to challenge.”

The standard of responsibility of the defendant who raises a Section

107 defence, and the scope of examination of the merits of the

challenge at the Order XXXIX stage, as set out in the above passage

from Roche-I may be said, by now, to have become legally fossilized.

15. We now examine the scope of Sections 64(1)(a), (e) and (f)

8

of

the Act, as they alone would be relevant for the conclusion at which

we propose to arrive.

16. Section 64(1)(a) is clear in its terms. It applies only where the

invention forming subject matter of the suit patent, “so far as claimed

in any claim” of the complete specification of the suit patent, has been

“claimed in a valid claim” of earlier priority date contained in the

complete specification of another patent granted in India. There is no

8

64. Revocation of patents.—

(1) Subject to the provisions contained in this Act, a patent, whether granted before or after

the commencement of this Act, may, [be revoked on a petition of any person interested or of the

Central Government or on a counter-claim in a suit for infringement of the patent by the High

Court] on any of the following grounds, that is to say,—

(a) that the invention, so far as claimed in any claim of the complete specification,

was claimed in a valid claim of earlier priority date contained in the complete

specification of another patent granted in India;

*****

(e) that the invention so far as claimed in any claim of the complete specification is

not new, having regard to what was publicly known or publicly used in India before the

priority date of the claim or to what was published in India or elsewhere in any of the

documents referred to in Section 13;

(f) that the invention so far as claimed in any claim of the complete specification is

obvious or does not involve any inventive step, having regard to what was publicly

known or publicly used in India or what was published in India or elsewhere before the

priority date of the claim;

FAO(OS) (COMM) 204/2025 Page 8 of 34

reference to disclosure, or coverage, or obviousness, or “newness” or

novelty. The clause uses only the expression “claim” and “claimed”.

The use is obviously deliberate, and the intention of the legislature in

employing the said expression has to be respected. The clause further

specifically employs the expression “the invention, so far as claimed

in any claim”. What matters, therefore, is not the invention per se, but

the extent to which the invention is claimed in the claim of the suit

patent. It is only, therefore, where the claim in the suit patent is

claimed in an earlier granted patent that Section 64(1)(a) would apply.

Identity of claims in the suit patent and the prior art is, therefore, the

sine qua non for Section 64(1)(a) to apply.

17. This interpretation is fortified by Section 13(1)(b)

9

of the Act.

Section 13 sets out the responsibility of the Examiner in the Patent

Office, while scrutinising an application for grant of patent, and

examining whether it cannot be granted on account of “anticipation by

previous publication” or “anticipation by prior claim”. Insofar as

anticipation by prior claim is concerned, under Section 13(1)(b), the

Examiner is required to examine whether the invention, so far as

claimed in any claim of the complete specification of the applicant’s

patent application, is claimed in any claim of earlier priority date.

What is, therefore, required is a claim-to-claim comparison.

9

13. Search for anticipation by previous publication and by prior claim.—

(1) The examiner to whom an application for a patent is referred under Section 12 shall make

investigation for the purpose of ascertaining whether the invention so far as claimed in any claim of

the complete specification—

*****

(b) is claimed in any claim of any other complete specification published on or

after the date of filing of the applicant's complete specification, being a specification filed

in pursuance of an application for a patent made in India and dated before or claiming the

priority date earlier than that date.

FAO(OS) (COMM) 204/2025 Page 9 of 34

18. The “person skilled in the art” has no role to play, while

applying Section 64(1)(a).

19. The distinction between clauses (e) and (f) of Section 64(1) is,

however, not so clear. Section 64(1)(e) applies where the invention, so

far as claimed in the suit patent is not “new”, having regard to prior

public knowledge or public usage in India. The scope and ambit of the

expression “new” is not disclosed in the Act. The clause, however,

covers “anticipation by prior publication”, in any document referred to

in Section 13. The relevant clauses of Section 13, for the purposes of

Section 64(1)(e), would be Section 13(1)(a) and 13(2)

10

, which

introduce the concept of “anticipation by publication”.

20. The Act does not define “anticipation”. It is generally accepted,

however, that “anticipation” dovetails into the concept of “novelty”,

and this interpretation also appears to be in sync with the provisions of

the Act, as Section 64(1)(e), which uses the expression “new” but does

not use the expression “anticipated”, requires reference to the

documents to which Section 13(1) refers, and Section 13(1), per

contra, uses the expression “anticipated by publication” but does not

use the expression “new”. One may, therefore, reasonably understand

10

13. Search for anticipation by previous publication and by prior claim.—

(1) The examiner to whom an application for a patent is referred under Section 12 shall make

investigation for the purpose of ascertaining whether the invention so far as claimed in any claim of

the complete specification—

(a) has been anticipated by publication before the date of filing of the applicant's

complete specification in any specification filed in pursuance of an application for a

patent made in India and dated on or after the 1st day of January, 1912;

*****

(2) The examiner shall, in addition, make such investigation for the purpose of ascertaining

whether the invention, so far as claimed in any claim of the complete specification, has been

anticipated by publication in India or elsewhere in any document other than those mentioned in sub-

section (1) before the date of filing of the applicant's complete specification.

FAO(OS) (COMM) 204/2025 Page 10 of 34

the statutory provisions as envisaging an invention, or a claim, which

is “anticipated by publication” not to be “new”.

21. The jury is still out, however, on how exactly to determine

whether a claim, in a later patent application, is “anticipated by prior

publication”. Though Courts, in India, have, in several decisions,

sought to explain the expression, there is still lack of uniformity

among the decisions.

22. It is truly ironical that, while devoting an entire chapter

11

to

“anticipation”, with the individual Sections titled “Anticipation by

previous publication”, Anticipation by previous communication to

Government”, Anticipation by public display, etc”, Anticipation by

public working” and “Anticipation by use and publication after

provisional specification”, not one of these provisions actually

explains what anticipation, in any of these contexts, means. The

provisions only set out circumstances which would not amount to

anticipation, without explaining the circumstances which would.

23. Perhaps, we would have to await an authoritative Apical

exposition on this issue.

24. We do not, however, propose to devote more time on Section

64(1)(e), as the findings of the learned Single Judge, with which we

agree, make out a clear prima facie case of vulnerability of the suit

patent to invalidity in terms of Section 64(1)(f).

11

Chapter VI

FAO(OS) (COMM) 204/2025 Page 11 of 34

25. Section 64(1)(f) invalidates the invention, so far as it is claimed

in any claim of the complete specification in the suit patent, which “is

obvious or does not involve any inventive step”, having regard to prior

public knowledge.

26. Unlike “anticipation” or “anticipation by prior publication”, the

Act does not even purport to define “obviousness”. The jury, however,

is not out on this one, and the legal position, in this regard, is

somewhat settled. “Obviousness” is to be decided by examining

whether a “person skilled in the art” would, from the teachings in prior

art, in conjunction with his existing prior knowledge, be able to arrive

at the invention claimed in the later patent. If he can, the claim in the

later patent is “obvious” from prior art, and would, therefore, not be

patentable. The presumption of obviousness can be dispelled by

establishing that, in transitioning from the teachings in prior art to the

claim in the later patent, an inventive step is involved. “Inventive

step” is defined, in Section 2(ja), as meaning “a feature of an

invention that involves technical advance as compared to the existing

knowledge or having economic significance or both and that makes

the invention not obvious to a person skilled in the art”.

27. F. Hoffmann-La Roche Ltd. v. Cipla Ltd.

12

, postulates the

following five inquisitorial steps which a Court must follow to decide

whether a later patent is “obvious” from prior art:

“120. From the decisions noted above to determine

obviousness/lack of inventive steps the following inquires are

required to be conducted:

12

(2016) 65 PTC 1 (DB), referred to, hereinafter, as Roche-II

FAO(OS) (COMM) 204/2025 Page 12 of 34

Step No. 1 To identify an ordinary person skilled in the art,

Step No. 2 To identify the inventive concept embodied in

the patent,

Step No. 3 To impute to a normal skilled but unimaginative

ordinary person skilled in the art what was common general

knowledge in the art at the priority date.

Step No. 4 To identify the differences, if any, between the

matter cited and the alleged invention and ascertain

whether the differences are ordinary application of law or

involve various different steps requiring multiple,

theoretical and practical applications,

Step No. 5 To decide whether those differences, viewed in

the knowledge of alleged invention, constituted steps which

would have been obvious to the ordinary person skilled in

the art and rule out a hideside approach.”

The Division Bench in Roche-II identified these five steps after a

careful study of authoritative prior pronouncements, largely from

judicial authorities overseas, on the issue. We have no doubt that the

aforesaid five steps could constitute a litmus test to arrive at a final

conclusion on obviousness of a later patent vis-à-vis prior art.

28. We, however, have our doubts as to the employability of these

steps by a Court which is examining an application for interlocutory

injunction under Order XXXIX of the CPC. The Supreme Court has,

inter alia in its decision in Brihan Karan Sugar Syndicate (P) Ltd. v.

Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana

13

,

cautioned against Courts building deep into complicated factual and

legal issues while adjudicating on interlocutory applications. A prima

facie view is all that is justified at that stage. In arriving at such a

13

(2024) 2 SCC 577

FAO(OS) (COMM) 204/2025 Page 13 of 34

prima facie view, it is our respectful opinion that strict adherence to

the aforesaid five steps, postulated by the Division Bench in Roche-II,

would be both impractical and unnecessary.

29. This is apparent when one refers to the precedents to which

Roche-II adverted, and which have guided the Court to formulate the

above five steps. The first step, as per Roche-II, is identification of

the “person skilled in the art”. In this regard, the Division Bench takes

a leaf from the following exposition, in the judgment of the United

States Supreme Court in William T. Graham et al v. John Deere

Company of Kansas City et al

14

:

“In determining the level of ordinary skill in the art, you should

first determine whether there was a number of people who

regularly worked to solve the type of problem that the invention

solved, and, if so, determine the level of ordinary skill of such

people at the time the invention was made. You must consider the

level of skill as to the time the invention was made. Among the

factors that may be considered in your determination are:

(1) The various ways that others sought to solve the

problems existing;

(2) The types of problems encountered;

(3) The rapidity with which new inventions are made in

this art;

(4) The sophistication of the technology involved; and

(5) The educational background of those actively

working in the field.”

These tests, though undoubtedly of great pith and moment in a final

ascertainment of obviousness, if employed by the Court at the Order

XXXIX stage, would unquestionably result in the Court embarking on

a mini trial, which is what the judgment of the Supreme Court in

Brihan Karan Sugar Syndicate specifically proscribes.

14

383 US 1 (1966)

FAO(OS) (COMM) 204/2025 Page 14 of 34

30. With greatest respect to the eminent authors of the Roche-II

judgment, we are of the opinion that the detailed examination which

that decision advocates undertaking, in order to arrive at a conclusion

on the aspect of obviousness of the claims in a suit patent vis-à-vis

prior art would be more relevant at the stage of final adjudication of

the suit, after evidence is led, and the necessary material, on the basis

of which the five steps postulated in the decision may be meaningfully

applied, is available. At the Order XXXIX stage, the Court is only

required to satisfy itself, prima facie, that a credible challenge to the

validity of the claims in the suit patent, as obvious from the

disclosures contained in prior art, is made out. For this, the judge may

permissibly himself don the mantle of the “person skilled in the art”,

and examine the issue from such a perspective. For that matter, even if

the judge were, by an intricate exercise, able to fashion a “person

skilled in the art” for the purposes of the controversy before him, the

aspect of obviousness would, in the ultimate eventuate, be invariably

decided by the judge himself.

31. Though the learned Single Judge has, in the impugned

judgment, faithfully followed the five steps envisioned in Roche-II,

she has independently found Semaglutide to be obvious, to a person

skilled in the art, from the teachings in prior art, particularly IN

275964

15

. We are in entire agreement with her findings in that regard,

and find no scope for interference therewith, within the limited

peripheries of appellate jurisdiction being presently exercised by us.

15

“IN’964”, hereinafter

FAO(OS) (COMM) 204/2025 Page 15 of 34

32. We, therefore, would be limiting the present judgment to this

aspect of the matter as, even on this single score, the impugned

judgment deserves to be upheld.

C. Scope of interference in appeal – the Wander standard

33. Before proceeding to deal with the reasoning of the learned

Single Judge, and the relevant statutory provisions, we may reproduce

the following note of caution, entered by the Supreme Court in its

judgment in Wander, with respect to the nature of the jurisdiction that

an appellate Court exercises while dealing with appeals against

interlocutory orders passed in intellectual property matters:

“14. The appeals before the Division Bench were against the

exercise of discretion by the Single Judge. In such appeals, the

appellate court will not interfere with the exercise of discretion of

the court of first instance and substitute its own discretion except

where the discretion has been shown to have been exercised

arbitrarily, or capriciously or perversely or where the court had

ignored the settled principles of law regulating grant or refusal of

interlocutory injunctions. An appeal against exercise of discretion

is said to be an appeal on principle. Appellate court will not

reassess the material and seek to reach a conclusion different from

the one reached by the court below if the one reached by that court

was reasonably possible on the material. The appellate court

would normally not be justified in interfering with the exercise of

discretion under appeal solely on the ground that if it had

considered the matter at the trial stage it would have come to a

contrary conclusion. If the discretion has been exercised by the

trial court reasonably and in a judicial manner the fact that the

appellate court would have taken a different view may not justify

interference with the trial court's exercise of discretion. After

referring to these principles Gajendragadkar, J. in Printers

(Mysore) Private Ltd. v. Pothan Joseph

16

:

“... These principles are well established, but as has been

observed by Viscount Simon in Charles Osenton &

16

AIR 1960 SC 1156

FAO(OS) (COMM) 204/2025 Page 16 of 34

Co. v. Jhanaton

17

‘...the law as to the reversal by a court of

appeal of an order made by a judge below in the exercise of

his discretion is well established, and any difficulty that

arises is due only to the application of well settled

principles in an individual case’.”

34. The Supreme Court has, in Pernod Ricard, reiterated the

aforesaid principle in the following words:

19.8. In Wander Ltd., this Court elaborated the principles

governing the grant or refusal of interim injunctions in trademark

infringement and passing off actions. It was underscored that

appellate courts ought to be circumspect in interfering with the

discretionary orders of lower courts in such matters. Interference is

warranted only where the discretion has been exercised arbitrarily,

capriciously, perversely, or in disregard of settled legal principles.”

D. Facts

35. The appellant, as the plaintiff before the learned Single Judge,

asserted Indian Patent 262697

18

for an invention titled “ACYLATED

GLP-1 ANALOGS COMPRISING NON -PROTEOGENIC AMINO

ACID RESIDUE”. The priority date of the suit patent is 18 March

2005. The suit specifically relates to Semaglutide, which is

specifically claimed as Claim 23 in the suit patent, which is an anti-

diabetic drug, and is sold by the appellant in India under the brand

names Wegovy and Rybelsus.

36. The appellant alleged that it had come to learn, in December

2024, that the respondents were importing and exporting Semaglutide,

which resulted in infringement of the suit patent. The appellant,

17

1942 AC 130

18

“IN’697”, hereinafter referred to as the suit patent

FAO(OS) (COMM) 204/2025 Page 17 of 34

therefore, addressed a notice to the respondents on 5 May 2025,

calling on the respondents to cease and desist from any further dealing

in Semaglutide. No response having been received from the

respondents. As the respondents did not oblige, the appellant

proceeded to institute CS (Comm) 565/2025, from which the present

appeal emanates, before the Intellectual Property Division of this

Court on 26 May 2025.

37. By order dated 29 May 2025, a learned Single Judge of this

Court bound the respondents to their statement that they would not

sell Semaglutide in India. That undertaking remains in effect till date.

38. The respondents did not dispute the fact that they were in fact

importing and exporting Semaglutide and that, therefore, stricto sensu,

they were infringing the suit patent. They, however, invoked Section

107(1) of the Patents Act, 1970

19

, by contesting the validity of the suit

patent. Their defence was that the suit patent was vulnerable to

invalidity in terms of clauses (a), (e), (f) and (k) of Section 64(1) of

the Act.

39. The learned Single Judge has considered, seriatim, the plea of

prima facie invalidity of the suit patent under Section 64(1)(a), (e) and

(f) and found that the respondents have setup a credible challenge to

its validity.

19

“the Act”, hereinafter

FAO(OS) (COMM) 204/2025 Page 18 of 34

40. Thus, we are examining this appeal solely with a view to

ascertaining whether the learned Single Judge has so erred in principle

as to justify interference by us in appeal.

E. Our view, disclosed

41. We are not in agreement with the learned Single Judge that a

credible challenge to the validity of the suit patent had been set up by

the respondents under Section 64(1)(a), but we do agree that a credible

challenge under Section 64(1)(e) and (f), particularly under Section

64(1)(f) was clearly made out.

42. To our mind, Semaglutide is obvious to a person skilled in the

art from the complete specifications, and the teachings contained

therein, in IN 275964

20

. The learned Single Judge has also held so,

and we agree with her findings. The only point on which we differ

with the learned Single Judge is in her finding that these facts would

make out a credible challenge, under Section 64(1)(a), to the validity

of the suit patent. It appears, to us, that though a credible challenge to

the validity of the suit patent is thereby made out, the challenge would

be relatable, not to Section 64(1)(a), but to Section 64(1)(e) and (f).

43. As a credible challenge under any of the clauses of Section

64(1) would suffice to set up a successful defence, under Section

107(1), to an infringement action, we concur in the final decision of

the learned Single Judge that the respondents have been able to make

20

“IN’964”, hereinafter

FAO(OS) (COMM) 204/2025 Page 19 of 34

out a credible challenge to the validity of the suit patent. Ergo our

observation that no case for interference is made out.

F. The impugned judgment

44. We now proceed to set out the reasoning of the learned Single

Judge, to the extent it is necessary for our findings in the matter.

I. Re. Section 64(1)(a) – Anticipation by prior claiming

45. The respondents contended, before the learned Single Judge,

that Semaglutide stood claimed in IN’964, which was a granted patent

of earlier priority date, and was, therefore, vulnerable to invalidity on

the ground of anticipation by prior claiming. The learned Single Judge

has, in this context, recorded the stand of the respondents thus, in para

28 of the impugned judgment:

“28. The Defendants have contended that the Semaglutide

compound falling under the Suit Patent/IN’697 is not novel since

the same compound is claimed/disclosed under the Genus

Patent/IN’964, and therefore, applying the principle of Novartis

AG v. Union of India

21

, the Plaintiff is barred from appropriating

the same subject matter claimed in the Genus Patent/IN’964 again

in the subsequent Suit Patent/IN’697. Therefore, the Suit

Patent/IN’697 is vulnerable to invalidity under Section 64(1)(a) of

the Patents Act. It is contended that claims in the Suit

Patent/IN’697 are not novel as they are anticipated by the claims of

the Genus Patent/IN’964 and therefore, liable for revocation. It is

further contended that the teaching in the Genus Patent/IN’964

sufficiently enables the Semaglutide compound. The Defendants

also rely upon the admissions made by the Plaintiff on the scope of

the claims in Genus Patent/IN’964 in corresponding patent across

various foreign jurisdictions, as well as in Plaintiff’s filings before

21

(2013) 6 SCC 1

FAO(OS) (COMM) 204/2025 Page 20 of 34

the Indian Patent Office, wherein the Plaintiff has claimed that the

Semaglutide compound is the only commercial product that has

resulted from both the Genus Patent/IN’964 and the Suit

Patent/IN’697.”

46. In response, the appellant contended, before the learned Single

Judge, that there was neither any valid claim, nor any enabling

disclosure in respect of Semaglutide in IN’964. It was contended by

the appellant that there were only two compounds specifically claimed

in IN’964 which were in Claims 18 and 21 thereof, and neither of

them was Semaglutide. As such, the appellant asserted that

Semaglutide could not be treated as invalid on the ground of

anticipation by prior claiming.

47. Having recorded these rival submissions, the learned Single

Judge has thus identified the issue arising before her for consideration:

“34. This aforesaid judgment lays down the legal proposition

that after the publication of a species patent, the defendant who

challenges the validity of the species patent on the ground of

anticipation by prior claiming in the genus patent has to establish

that the derivation of the claim in the species patent, from the claim

in the genus patent, is actually guided by the teachings in the genus

patent itself. It further holds that where a genus patent is a Markush

structure, the existence of enabling disclosure in the genus patent

attains significance.”

48. Proceeding thereafter to examine the merits of the respondents’

challenge, the learned Single Judge initially refers to a research article,

‘Discovery of the Once-Weekly Glucagon-Like Peptide-I (GLP-1)

Semaglutide, Journal of Medicinal Chemistry’, by Lau, J et al. This

research article, she notes, refers to the compound at Serial No.61 of

the Genus Patent /IN’964 as the ‘Alanine’ version of the semaglutide

or alternatively as ‘Ala Semaglutide’. The appellant also admitted that

FAO(OS) (COMM) 204/2025 Page 21 of 34

the only difference between the compound exemplified at Example 61

in Claim 21 of the Genus Patent/IN’964, and Semaglutide, was the

presence of the α-aminoisobutyric acid (Aib) amino acid in place of

Alanine (Ala) at the 8

th

position.

49. The learned Single Judge thereafter proceeds to observe as

under, in para 38 of the impugned judgment:

“Thus, to assess whether the Suit Patent/lN'697, i.e.. Semaglutide

compound, is claimed in the Genus Patent/lN '964, this Court will

examine whether there is a disclosure of each feature or sufficient

teachings in the claims of the Genus Patent/IN '964 enabling a

'person skilled in the art regarding the features of the Suit

Patent/IN' 697, i.e., the Semaglutide compound.”

The learned Single Judge thereafter proceeds to undertake a claim-to-

claim comparison between the claims in the Genus Patent/IN’964 and

the claims in the Suit Patent.

50. Following this, the learned Single Judge has extracted para 10

of the rejoinder filed by the appellant before her, which read as under :

“10. The first of the compounds in claim 23 of IN 697 is the

compound now known as Semaglutide. The novel and inventive

compound Semaglutide, comprises the native GLP-1(7-37)

peptide sequence with the following modifications:

10.1 substitution of the amino acid alanine (Ala) at position 8

with a-aminoisobutyric acid (Aib), a nonproteogenic amino

acid;

10.2 substitution of the amino acid lysine (Lvs) with arginine

(Arg) at position 34; and

10.3 Lvs at position 26 acvlated on its side chain with a

moiety that comprises two "OEG" groups, a y-Glu group, and

a C18 fatty diacid, The specific OEG groups are "AEEA"

FAO(OS) (COMM) 204/2025 Page 22 of 34

groups - AEEA is short for 2-(2-(2-Aminoethoxy)ethoxy)acetic

acid. (Said moiety comprises at least two acidic groups,

wherein one acidic group is attached terminally)."

(Emphasis contained in the original)

51. The learned Single Judge thereafter proceeds, on the plea of

anticipation by prior claiming, to hold as under:

“40. The Defendants have contended that these features enlisted

by the Plaintiff are already exemplified in the Ala Semaglutide

compound/Example 61. The Plaintiff has also compared the

structure of the Semaglutide compound, as claimed in Claim 23 of

the Suit Patent/IN’697, with the Ala Semaglutide

compound/Example 61 of the Genus Patent/IN’964. The

comparison is set out below:

Name of

Compound

Structural Similarities Difference

between the

Semaglutide

compound

and the Ala

Semaglutide

compound

Ala

Semaglutide

compound

- Aib at the

8

th

position

instead of

Ala

FAO(OS) (COMM) 204/2025 Page 23 of 34

Semaglutide

compound

Further, Plaintiff has also made a comparison of Ala Semaglutide

compound/Example 61 of Genus Patent/IN’964 with Semaglutide

compound of the Suit Patent/IN’697 in the expert affidavit of

Gregory L Challis dated 11

th

July 2025. The extract of the

comparison is set out below:

Example 61 of IN’964

Difference

between

Example 61 of

IN ‘964 and

Example 4 of

IN ‘697

(Semaglutide):

Semaglutide

contains Aib

(which is a non-

proteogenic

amino acid) at

position 8.

Example 61

contains Ala at

position 8

which is a

proteogenic

amino acid.

Апy change in

peptide

sequence can

alter the

physical,

chemical and

pharmacologica

l properties of

Example 4 of IN’697 (Semaglutide)

FAO(OS) (COMM) 204/2025 Page 24 of 34

the resulting

compound.

Any such

change can also

raise the risk

immunogenicity

. In some

settings there

were fears that

non-proteogenic

amino acids

could

exacerbate this

risk (non-

proteogenic

amino acids are

amino acids

which do not

occur in nature

in proteins).

This risk could

be particularly

pronounced for

medicines taken

chronically

(such as

treatments for

type 2 diabetes)

as this provides

a long time for

immunogenicity

to develop.

41. The aforesaid comparisons filed by the Plaintiff

acknowledges that the sole/only difference in the Semaglutide

compound claimed in Claim 23 as exemplified in Example 4 of the

Suit Patent/IN’697 from the Ala Semaglutide compound/Example

61 of the Genus Patent/IN’964, is in the insertion of ‘Aib’, i.e., a

non-proteogenic amino acid, at the 8

th

position.

42. The tables above show that there is no dispute as to the

effect that the Plaintiff had already claimed a compound

22

in Claim

21 of the Genus Patent/IN’964, which has the GLP-1 (7-37)

sequence with modification of Arg at the 34

th

position and Lys at

the 26

th

position with at least two [2] acidic groups, wherein one

22

Example 61

FAO(OS) (COMM) 204/2025 Page 25 of 34

[1] acidic group is attached terminally. Thus, the differences set out

by the Plaintiff at paragraphs ‘10’, ‘10.2’ and ‘10.3’ of its rejoinder

[as noted above] have already been claimed in the identical

positions of the Ala Semaglutide compound/Example 61.

It would also be relevant to note that substitution of the

amino acid Lys with Arg at position 34 has been specifically

claimed at Claim 18 of the GLP-1 (7-37) analogue. So also, the

preference for GLP-1 (7-37) analogue is also apparent in the

dependent claims of the GLP-1 (7-37) analogue.

43. In the aforenoted admissions of the Plaintiff, the issue that

arises for consideration is whether a ‘person skilled in the art’ will

be enabled by following the specific instructions of the claims of

the Genus Patent/IN’964 to substitute ‘Ala’ with ‘Aib’ residue at

the 8

th

position of the Ala Semaglutide compound/Example 61.

44. Upon perusal of the claims of the Genus Patent/IN’964, it is

apparent that the independent Claim 1 of the Genus Patent/IN’964

claims a GLP-1 analogue that comprises an amino acid sequence,

i.e., formula [V], where an unspecified amino acid at the 8

th

position [Xaa8] could be selected from a broader group containing

‘Ala’, Gly, Val, Leu, lle, Lys, ‘Aib’, etc.

Later, in the dependent Claim 16 of the Genus

Patent/IN’964, the patentee has specifically claimed that the amino

acid at the 8

th

position of GLP-1 analogue claimed in Claim 1 of

the Genus Patent/IN’964 is ‘Aib’, thereby asserting that ‘Aib’ is

the preferred amino acid for the substitution at the 8

th

position.

Therefore, for a ‘person skilled in the art’, upon perusal of

the Ala Semaglutide compound/Example 61 or any compounds

claimed in Claim 21 of the Genus Patent/IN’964, he/she will be

enabled to make a substitution at the 8

th

position with ‘Aib’, in

light of specific Claim 16 of the Genus Patent/IN’964.

With Claim 16 of the Genus Patent/IN’964, it is evident

that the sole novel feature of the Suit Patent, i.e., ‘Aib’ at the 8

th

position, was already claimed in the Genus Patent/IN’964.

45. Now, upon considering the independent Claim 1 of the Suit

Patent/IN’697, the Plaintiff/Patentee has claimed that the GLP-1

analogue has at least one [1] non-proteogenic amino acid residue at

position seven [7] and/or eight [8]. Thereafter, in the dependent

Claim 16 of the Suit Patent/IN’697, the patentee has specified that

at the 8

th

position of the GLP-1 analogue, it is nothing but ‘Aib’;

however, GLP-1 (7-37) analogue with ‘Aib’ at the 8

th

position was

already claimed in Claims 1, 11 and 16 of the Genus

FAO(OS) (COMM) 204/2025 Page 26 of 34

Patent/IN’964.

46. Therefore, from the Claims 1 and 21 [Example 61

compound therein], read with explicit disclosure of non-

proteogenic amino acid, i.e., ‘Aib’ at the 8

th

position in Claim 16 of

the Genus Patent/IN’964 as the most preferred non-proteogenic

amino acid of the inventor, a ‘person skilled in the art’ will be

enabled to make the substitution at the 8

th

position of the Ala

Semaglutide compound/Example 61. With this substitution, the

‘person skilled in the art’ will undoubtedly reach the Semaglutide

compound as claimed in Claim 23 [Example 4] of the Suit

Patent/IN’697. In view of Claim 21 [Ala Semaglutide

compound/Example 61] and Claim 16 of the Genus Patent/IN’964,

it is evident that all the features of the Semaglutide compound

enlisted by the Plaintiff in its rejoinder at paragraphs ‘10’, ‘10.1’,

‘10.2’ and ‘10.3’ already stand claimed in the Genus

Patent/IN’964, with an explicit instruction to combine these

features. Thus, based on the analysis above, it could be concluded

that the Semaglutide compound, as claimed in the Suit

Patent/IN’697, was prior claimed in the Genus Patent/IN’964.”

52. Thus, in the afore-extracted paragraphs 40 to 46 of the

impugned judgment, the learned Single Judge essentially holds thus:

(i) The novel features of Semaglutide over prior art, as

identified by the appellant itself, in para 10 of the rejoinder filed

before the learned Single Judge were

(a) substitution of the amino acid alanine (Ala) with α-

aminoisobutyric acid (Aib) at position 8,

(b) substitution of the amino acid lysine (Lys) with

arginine (Arg) at position 34 and

(c) activation of lysine at position 26 on its side chain

with a moiety comprising at least two acidic groups in

which one acidic group is attached terminally.

FAO(OS) (COMM) 204/2025 Page 27 of 34

(ii) The defendants’ contention, per contra, was that these

features already stood disclosed in the exemplified Compound

61 in Claim 21 in the Genus Patent IN’964.

(iii) The appellant had itself undertaken a comparison of

Semaglutide, as Claim 23 in the Suit Patent, with Compound 61

in Claim 21 in the Genus Patent IN’964 and had also filed an

affidavit of an expert in that regard. The appellant clearly

admitted, at both points, that the only difference between the

exemplified Compound 61 in Claim 21 of the Genus Patent

IN’964 and Semaglutide as Claim 23 of the Suit Patent was the

replacement of ‘Ala’ at the 8

th

position, in the Genus Patent with

‘Aib’ in Semaglutide.

(iv) Claim 21 in IN’964 already claimed a GLP-1 sequence

which was modified with arginine at the 34

th

position and lysine

at the 26

th

position with two acidic groups, one of which was

attached terminally. In other words, the purportedly novel

features of semaglutide, as contained in paras 10.2 and 10.3 of

the rejoinder filed by the appellant, before the learned Single

Judge, already stood claimed in Claim 21 of IN’964.

(v) The only issue to be considered, therefore, was whether a

person skilled in the art would be enabled, by the teachings in

the claims of IN’964, to substitute ‘Ala’ with ‘Aib’ at the 8

th

position in Compound 61 in Claim 21 of IN’964.

FAO(OS) (COMM) 204/2025 Page 28 of 34

(vi) Claim 1 of the genus patent IN’964 claimed a GLP-1

analogue with an amino acid sequence in which the amino acid

at position 8

could be selected from a group which included

‘Ala’ and ‘Aib’.

(vii) Dependant Claim 16 below Claim 1 in IN’964

specifically claimed an amino acid formed by substituting Aib

at position 8 of Claim 1. Thus, it was disclosed, in the genus

patent IN’964 that Aib was the preferred amino acid for

substitution at position 8 in claim 1 of IN’964.

(viii) A person skilled in the art would, therefore, be guided by

the teachings in the Genus Patent IN’964 to substitute Aib at

position 8 in claim 1 in the said Genus patent instead of Ala.

(ix) Thus, claim 1 and Example 61 in claim 21 of IN’964,

read with the disclosure of Aib at position 8 in claim 16 of

IN’964, was sufficient to enable a person skilled in the art to

substitute Aib at position 8 in the exemplified compound 61 in

Claim 21 of the Genus Patent IN’964. This substitution would

result in Semaglutide.

(x) As all other features of Semaglutide were already

claimed in IN’964, with the explicit instruction to combine

them, the learned Single Judge holds that semaglutide was

anticipated by prior claiming in the Genus Patent/ IN’964.

II. Section 64(1)(e) – Anticipation by prior publication

FAO(OS) (COMM) 204/2025 Page 29 of 34

53. To support their challenge to the validity of the suit patent under

Section 64(1)(e), the respondents again relied on IN’964 as the

applicable prior art. The learned Single Judge disposes of this

challenge by holding, in paras 83 and 84 of the impugned judgment,

that the findings returned in respect of the challenge under Section

64(1)(a) would apply mutatis mutandis to the challenge under Section

64(1)(e):

“83. In the present case, Defendants have identified Genus

Patent/IN’964, as the relevant prior art for challenging the validity

of the Suit Patent/IN’697 under Section 64(1)(e) of the Patents Act.

The priority date of the Suit Patent/IN’697 has already been

decided in the previous section as after the publication of the

Genus Patent/IN’964.

84. The analysis under Section 64(1)(a) of the Patents Act is

relevant in the fact of this case under Section 64(1)(e) of the

Patents Act and applies mutatis mutandis since the prior patent

referred to in the deliberations under Section 64(1)(a) and the prior

art referred to under Section 64(1)(e) in the facts of this case is the

same document i.e., Genus Patent/IN’964. In the considered view

of this Court, when Example 61 compound of Genus Patent/IN’964

is read in conjunction with the specific Claim 16 therein, the Genus

Patent/IN’964 specifically discloses the Suit Patent/IN’697, i.e.,

Semaglutide compound for a ‘person skilled in the art’ to

reproduce it without undue experimentation. Therefore, the Suit

Patent/IN’697 is anticipated by the Genus Patent/IN’964, which

was published before the priority date of the Suit Patent/IN’697.

III. Section 64(1)(f) – Obviousness

54. With respect to the challenge under Section 64(1)(f), the

respondents relied on three prior arts i.e. Genus Patent / IN’964 and

the teachings of Deacon et al [1998] and Knudsen et al [2004]. The

learned Single Judge, thereafter, proceeds on an intricate analysis of

FAO(OS) (COMM) 204/2025 Page 30 of 34

the facts before her, in compliance with the “5-step test” postulated by

the Division Bench in Roche-II.

G. Analysis

55. The exercise, as undertaken, is detailed and thorough, and

deserves commendation. However, we do not deem it necessary to

examine the findings of the learned Single Judge with respect to

Section 64(1)(f), as we are of the view that her findings, with respect

to Section 64(1)(a), as noted supra, make out a clear case of

obviousness of Semaglutide, as claimed in the suit patent, vis-à-vis the

claims and complete specification in prior art in the form of IN’964.

56. We feel, in fact, here, that the learned Single Judge has erred,

albeit to a slight degree, in conflating the concept of obviousness,

which is relevant for Section 64(1)(f), and anticipation by prior

claiming, which pertains to Section 64(1)(a). The findings returned by

the learned Single Judge, for holding a prima facie case to have been

made out under Section 64(1)(a), in fact make out a prima facie

credible challenge to the validity of the suit patent under Section

64(1)(f).

57. The following paragraphs from the impugned judgment would

make this apparent:

“28. The Defendants have contended that the Semaglutide

compound falling under the Suit Patent/IN’697 is not novel since

the same compound is claimed/disclosed under the Genus

Patent/IN’964, and therefore, applying the principle of Novartis

AG v. Union of India, the Plaintiff is barred from appropriating the

same subject matter claimed in the Genus Patent/IN’964 again in

FAO(OS) (COMM) 204/2025 Page 31 of 34

the subsequent Suit Patent/IN’697. Therefore, the Suit

Patent/IN’697 is vulnerable to invalidity under Section 64(1)(a) of

the Patents Act. It is contended that claims in the Suit

Patent/IN’697 are not novel as they are anticipated by the claims of

the Genus Patent/IN’964 and therefore, liable for revocation. It is

further contended that the teaching in the Genus Patent/IN’964

sufficiently enables the Semaglutide compound. The Defendants

also rely upon the admissions made by the Plaintiff on the scope of

the claims in Genus Patent/IN’964 in corresponding patent across

various foreign jurisdictions, as well as in Plaintiff's filings before

the Indian Patent Office, wherein the Plaintiff has claimed that the

Semaglutide compound is the only commercial product that has

resulted from both the Genus Patent/IN’964 and the Suit

Patent/IN’697.

*****

34. This aforesaid judgment

23

lays down the legal proposition

that after the publication of a species patent, the defendant who

challenges the validity of the species patent on the ground of

anticipation by prior claiming in the genus patent has to establish

that the derivation of the claim in the species patent, from the

claim in the genus patent, is actually guided by the teachings in the

genus patent itself. It further holds that where a genus patent is a

Markush structure, the existence of enabling disclosure in the

genus patent attains significance.

*****

38. Thus, to assess whether the Suit Patent IN’697, i.e.,

Semaglutide compound, is claimed in the Genus Patent/IN’964,

this Court will examine whether there is a disclosure of each

feature or sufficient teachings in the claims of the Genus

Patent/IN’964 enabling a ‘person skilled in the art’ regarding the

features of the Suit Patent/IN’697, i.e., the Semaglutide

compound.”

(Emphasis supplied)

The italicized parts of the above paragraphs from the impugned

judgment pertain, not to the realm of anticipation by prior claiming

under Section 64(1)(a), but obviousness to a person skilled in the art,

under Section 64(1)(f). To this limited extent, we are unable to agree

23

Novartis AG v. Natco Pharma Ltd, 2023 SCC OnLine Del 106, authored by the author of this judgment,

sitting singly

FAO(OS) (COMM) 204/2025 Page 32 of 34

with the learned Single Judge that a prima facie credible challenge to

the validity of the suit patent had been laid by the respondents, under

Section 64(1)(a), which requires congruence of claims, and nothing

less.

58. The person skilled in the art, in fact, has no real part to pay in

Section 64(1)(a). His perspective is relevant to Section 64(1)(f) and,

to a lesser degree, to Section 64(1)(e).

59. However, the exercise undertaken by the learned Single Judge,

following these findings, though undertaken in the context of Section

64(1)(a), make out a clear case under Section 64(1)(f).

60. We have already extracted, earlier, the findings of the learned

Single Judge in that regard, and also paraphrased them in our own

words, and do not deem it necessary to reiterate them. Suffice it to

state that the learned Single Judge has held, in essence, that

(i) of the novel and inventive features of Semaglutide, as

identified by the appellant itself in para 10 of the rejoinder

filed before the learned Single Judge, the features in paras 10.2

and 10.3 were already claimed in Claim 21 of IN’964,

(ii) the appellant had itself acknowledged that the only

distinguishing feature between Compound 61 in Claim 21 of

the Genus Patent IN’964 and Semaglutide was the amino acid

‘Aib’ at the 8

th

position in place of ‘Ala’,

(iii) Claim 1 read with dependent Claim 16 in the Genus

Patent IN’964 teach that ‘Aib’ was a preferred amino acid for

substitution at position 8,

FAO(OS) (COMM) 204/2025 Page 33 of 34

(iv) the combined effect of these teachings would lead a

person skilled in the art to substitute, in Example 61 in Claim

21 of the Genus Patent IN’964, the ‘Aib’ amino acid in place

of ‘Ala’, which would result in Semaglutide.

61. Five of the inventors were common to the Genus Patent

IN’964 and the suit patent. Where the inventors are common, the

Division Bench of this Court has, in AstraZeneca AB v. Intas

Pharmaceuticals Ltd.

24

, held that the aspect of obviousness would

have to be viewed from the perspective of a “person in the know”,

rather than a “person skilled in the art”. This Bench has, in F

Hoffmann-La Roche AG v. Natco Pharma Limited

25

, approved and

followed the said test. Special Leave Petitions, preferred against both

these decisions, stand dismissed by the Supreme Court. The “person

in the know” test may, therefore, be regarded as having been

accorded Apical affirmation.

62. Viewed from the perspective of a person in the know, it is

prima facie clear that Semaglutide would be obvious from the

teachings contained in the Genius Patent IN’964 and that, therefore, a

credible challenge to the validity of the suit patent, under Section

64(1)(f), is made out.

63. Even on this sole ground, as the impugned judgment is liable

to be affirmed, we do not deem it necessary to enter into any other

aspect of the matter.

24

2021 SCC OnLine Del 3746

25

2025 SCC OnLine Del 6390

FAO(OS) (COMM) 204/2025 Page 34 of 34

64. We also do not deem it necessary to reproduce the submissions

of learned Counsel for the appellant in this regard, as, on the aspect

of obviousness of Semaglutide from the teachings contained in the

Genus Patent IN’964, there is no substantial traversal.

Conclusion

65. We, therefore, see no reason to disturb the impugned judgment

of the learned Single Judge.

66. The appeal is dismissed.

67. Observations contained in this judgment, needless to say, are

only prima facie, and would not influence the learned Single Judge

while adjudicating the suit on merits.

C. HARI SHANKAR, J.

OM PRAKASH SHUKLA, J.

MARCH 09, 2026/aky/yg