Himachal Pradesh High Court
Boehringer Ingelheim International vs Alventa Pharma Limited & Anr on 17 March, 2025
Author: Ajay Mohan Goel
Bench: Ajay Mohan Goel
IN THE HIGH COURT OF HIMACHAL PRADESH, SHIMLA OMP No.630 of 2023 in Civil Suit (COMS) No.14 of 2023 Reserved on 11.03.2025 Decided on: 17.03.2025 Boehringer Ingelheim International GmbH & Anr. ... Applicants.
Versus Alventa Pharma Limited & Anr. ... Respondents Coram Hon'ble Mr. Justice Ajay Mohan Goel, Judge. Whether approved for reporting?1 ____________________________________________________ _ For the applicants/ plaintiffs. : Mr. Vinay Kuthiala, Senior Advocate, with Dr. Sanjay Kumar, M/s Atul Jhingan, Priyansh Sharma, Ankit Thakur and Sanket Singh Sengar, Advocates.
For the respondents/ defendants : Mr. Rahul Mahajan, Advocate, for defendant No.1.
Defendant No.2 ex parte.
Ajay Mohan Goel, Judge This order shall dispose of an application filed under Order XXVI, Rule 9 read with Order XXXIX Rule 7 of the Civil Procedure Code, by the applicants. In terms of the application, the applicants have prayed for the following reliefs:-
"(a) Appoint advocate(s)/official(s) of the Hon'ble Court as Local Commissioner(s) to visit the premises of the Respondents at the addresses given above and such other premises/godowns which the said Respondents, their directors, promoters, assigns, successors-in-interest, licensees, franchisees, partners, representatives, servants, distributors, employees, stockiest, retailors, agents, sister 1 Whether reporters of the local papers may be allowed to see the judgment?2
concerns, subsidiaries etc. or anyone associated with them would disclose to the Local Commissioner(s), where the offending products including infringing products covered by the subject patent, labels, cartons, packets, materials and things in relation thereto are kept or stocked;
(b) Direct the Local Commissioner(s) so appointed to make an inventory of all infringing products covered by the subject patent including labels cartons, packets, materials and things at the premises of the said Respondents;
(c) Direct the Local Commissioner(s) so appointed to, upon making the above inventory, confiscate and take into custody the infringing products covered by the subject patent including labels, cartons, packets, materials and things and keep the same in safe custody, under lock and key and/or alternatively entrust the same to the said Respondents on superdari, retaining a few samples for deposit in Court:
(d) Permit the Local Commissioner(s) to take assistance of any responsible Officer from the office of the Central Drugs Standard Control Organisation, Himachal Pradesh, to inspect the premises and take inventories with regard to the infringing products and consequently, direct the said Officer to extend the assistance to the Local Commissioner;
(e) Authorize the Applicants representatives to enter the premises of the said Respondents along with the Commissioner(s) to assist in the execution of the Commission, if necessary;
(f) Permit the Applicants/their representatives to take photographs of all the infringing products including labels, 3 cartons, packets, materials and things;
(g) Authorize the Local Commissioner(s) to obtain police assistance from the area Police Station, in case they are obstructed in the performance of their duties".
2. The applicants/plaintiffs have filed the suit on the plea that plaintiff No.1 is owners of Indian Patent Number 268846, which was granted on 18.09.2015 and as the non-applicants/defendants were infringing the Patent of the applicants, they be injuncted from doing so. Said Patent expired on 11.03.2025.
3. This Court, on 15.03.2024, in OMP No.628 of 2023, has inter alia passed the following order:-
"By way of this application, preferred by the plaintiffs under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure, the following interim relief has been prayed for:
"a) Restrain the Respondents by themselves, their directors, licensees, stockiest and distributors, agents and/or anyone claiming through any of them, jointly and severally from infringing the patent rights of Applicant No. 1 under Indian Patent No. 268846 by launching, advertising making, using, offering for sale, selling, importing and/or exporting the medicinal product, Empagliflozin in any form whatsoever including Empagliflozin API, Empagliflozin formulation, "Empagliflozin Tablets", "Empagliflozin + Metformin Hydrochloride Tablets" and/or "Empagliflozin + Linagliptin Tablets" or any "generic version" thereof including 4 Fixed Dose Combination of Empagliflozin + Linagliptin Tablets or any produce sold under the trade mark(s)/name(s) "GLYMAXBI" or any other trade mark/ name, whatsoever, or any other produce covered by the subject patent granted by the controller of Patents on September 18, 2015 in favour of Applicant No.1"
Learned counsel for defendant No.1, on instructions from Mr. Sandeep Sihag, Factory Manager and Authorized Signatory of Alventa Pharma Limited/ defendant No.1 who is present in the Court, has informed the Court that the drug qua which the patent is being claimed by the applicant was erroneously manufactured by defendant No.1, the same stands withdrawn from the market and stands destroyed as on date. Learned counsel further submits that in future no such drug qua which the patent is being claimed by the applicant, shall be manufactured by defendant No.1.
As prayed for, list on 03.04.2024. In the meanwhile, defendant No.1 may file an affidavit mentioning therein what stands stated on its behalf by the learned counsel today before the Court."
4. Thereafter, on 16.12.20224, in OMP No.628 of 2023, the following order was passed:-
"In this application, learned Senior Counsel appearing for the applicants/plaintiffs submits that in the light of the fact that there is an undertaking given by the defendants that they shall not be manufacturing any product which infringes the Patent of the plaintiffs, the application be disposed of by granting the reliefs as have been prayed therein.5
Learned counsel for the non-applicant/ defendant No.1 has drawn the attention of the Court to the order passed in the application on 15.03.2024 and he submits that in light of the order passed, in fact, no further order is required to be passed in the said application. Having heard learned Senior Counsel for the plaintiffs as well as learned counsel for defendant, this Court is of the considered view that in light of the undertaking that has been given by defendant No.1 that neither it is nor it will manufacturing any product which infringes the Patent of the plaintiffs, this application is disposed of with the observation that in light of the prayer made therein, during the pendency of the suit/ during the life of the Patent whichever is earlier, the defendants shall not manufacture/ offer for sale, import or export products that infringe the patent of the plaintiffs in terms of the prayer made in the application. The application stands disposed of."
5. Learned Senior Counsel for the applicants submitted that in the peculiar facts of the case it is indeed necessary to appoint a Local Commissioner at this stage itself in terms of the prayers made in the application, because in case needful is not done at this stage, then the non-applicants would get time and opportunity to do away with the evidence which would prejudice the case of the applicants. Learned Senior Counsel further submitted that the reason as to why the application was purportedly filed with the suit was that because every material evidence is in the possession of the non-applicants/defendants and the applicants do not have any 6 access to the facility of the defendants, therefore, issuance of necessary directions for appointment of a Commissioner are necessary. Learned Senior Counsel further submitted that appointment of Local Commissioner inter alia is necessary to ascertain the following facts:-
"1. To ascertain whether the impugned products had been offered for sale/sold/exported to and manufactured for parties other than Defendant No. 2.
2. To ascertain whether the impugned products are still being offered for sale/sold/exported to and manufactured for parties including Defendant No. 2.
3. To make a complete Inventory of the impugned products including labels, cartons, packets, material and things at the site and keep the same in safe custody, under lock and key and/or alternatively entrust the same.
4. To review date wise Report and Certificate issued by Chartered Accountant reflecting the total unit manufactured, sold, recalled and destruction of the impugned products and related documents pertaining thereto including books of accounts.
5. To seize and seal the impugned products including labels, cartons, packets, material and things at the site.
6. To ascertain total value of impugned products manufactured/ sold/offered for sale to parties other than Defendant No. 2."
6. On the other hand, learned counsel representing the non-applicant/ respondent No.1 vehemently argued that the application is completely misconceived, for the reason that when it has been stated by non-applicant No.1 in the Court that the drugs 7 which were being erroneously manufactured by it stood withdrawn from the market and stood destroyed as on date, therefore, there is no necessity to undertake this exercise. Learned counsel also referred to the documents appended with the reply to the application filed and submitted that there is no reason to disbelieve the documents appended with the reply and therefore also, no order is required to be passed on the application.
7. Having heard learned Senior Counsel for the applicants and learned counsel for non-applicant/defendant No.1, this Court is of the considered view that as it is the stand of defendant No.1 that it is no more manufacturing the product in issue, no prejudice shall be caused to it in case this application is allowed and Local Commissioner is appointed to ascertain some of the contentions raised by the applicants in the application.
8. This Court is not disbelieving the contention of the non- applicant or the documents appended with the reply, but fact of the matter remains that no prejudice will be caused to the said defendant which as per its own undertaking is stated to be no more manufacturing the product in issue, more so when the Commission is being appointed at the expense of the plaintiffs.
9. Accordingly, this application is allowed and this Court appoints Shri Raman Jamalta and Shri Paras Dhaulta, Advocates, as Commissioners to do the following:-
"(1) Learned Commissioners shall visit the manufacturing 8 premises of defendant No.1, situated in District Solan, Himachal Pradesh and on the basis of record available submit his report to the effect whether the products in issue have been offered for sale/sold/ exported to by defendant No.1 and manufactured for parties other than defendant No.1?
(2) Learned Commissioners shall ascertain whether the products in issue are still being offered for sale/ sold/ exported to and being manufactured for parties including defendant No.2.
(3) Learned Commissioners shall make a complete Inventory of the impugned products including labels, cartons, packets, material and things at the site and keep the same in safe custody, under lock and key and/or alternatively entrust the same.
(4) Learned Commissioners shall seize and seal the impugned products including labels, cartons, packets, material and things at the site.
(5) Learned Commissioners shall ascertain total value of impugned products manufactured/ sold/offered for sale to parties other than Defendant No. 2."
10. In addition, learned Commissioners also submit their report as to whether there is any record available with defendant No.1 qua the total products manufactured/sold/recalled or destroyed its products subject matter of the Civil Suit.
11. Let, the premises be visited by Local Commissioners on or before 23.03.2025. The fee of learned Commissioners is fixed at Rs.65,000/- each including expenses. The fee as well as expenses shall be borne exclusively by the plaintiffs. Fee shall be paid before 9 23.03.2025. The report be submitted by learned Commissioners on or before the next date of hearing, i.e. 25.03.2025. Learned Commissioners are permitted to take assistance of the Station House Officer of the area, if required. Learned Commissioners are also allowed to take photographs and videography of the proceedings. Learned Commissioners shall inform the plaintiffs as well as defendant No.1 of the date and time of the visit of the premises in question and they shall be accompanied by a representative of the plaintiffs as well as defendant No.1. Learned Commissioners shall submit their report in a sealed cover to the Court and copies thereof shall not be supplied to the parties by learned Commissioners. The application stands disposed of.
(Ajay Mohan Goel) Judge March 17, 2025 (Rishi)