Vifor International Ltd & Anr vs Unijules Life Sciences Limited & Anr on 11 March, 2022

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Delhi High Court - Orders

Vifor International Ltd & Anr vs Unijules Life Sciences Limited & Anr on 11 March, 2022

1. Parties were referred for mediation to the Delhi High Court Mediation and Conciliation Centre. Report of the learned Mediator dated 21.02.2022 has been received. A Settlement Agreement in terms of the settlement between the parties has been executed on 21.02.2022. Terms of the settlement are as follows:-

a) The Second Party hereby acknowledges that the First Party has exclusive rights to manufacture, market, offer for sale, sell or otherwise deal with Ferric. Carboxymaltose by virtue of Indian Patent No. 221536;

b) The Second Party acknowledges that the Indian Patent No. 221536 is valid and subsisting till October 20, 2023 and hereby undertakes to not manufacture, market, offer for sale, sell or otherwise deal with Ferric Carboxymaltose in any manner till the expiry of Indian Patent No. 221536;

CS(COMM) 264/2021 Page 1 of 4 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:14.03.2022 15:03:41

c) The Second Party acknowledges that Indian Patent No. 221536 is a valid patent and undertakes to not challenge the validity of the said patent, or any of its counter parts in countries other than India, at any time in the future, in any manner, including as a defence to any suit for infringement, in a counterclaim in a lawsuit, or in any revocation or cancellation proceedings before any court, tribunal or authority.

d) The Second Party undertakes to destroy all stock of Ferric Carboxymaltosein its power, possession or control within 7 days of these settlement terms between the Parties coming into effect and immediately thereupon provide a confirmation of the same in writing along with photographic evidence of destruction of such stock to the First Party through its counsel.

e) The Second Party undertakes to remove all reference to Ferric Carboxymaltose, including under the brand names UNIRON or UNISERUM or any other brand from its brochures, literature, websites under its control, social media handles of the Second Party, or in any other platform and on any other mode, whether printed or digital, which suggest that the Second Party deals in Ferric Carboxymaltose. The Second Party also undertakes to make all efforts to ensure that any reference to Ferric Carboxymaltose in relation to the Second Party is removed by any third-party platform, whether in printed or digital form, and shall folly cooperate with the First Party in having such material removed. The Second Party shall provide proof of having removed all references to Ferric Carboxymaltosc, including under the brand names UNIRON or UNISERUM or any other brand, as stipulated under this clause, within 30 days of the signing of the present Settlement Agreement.

f) The Second Party shall, within 7 days of these settlement terms becoming effective between the Parties, shall communicate, in writing, to each of its distributors, stockists and dealers, that it has stopped dealing in Ferric Carboxymaltose, under the brand UNIRON FCM, UNISERUM or otherwise, and that the manufacture, marketing, offer for sale and sale of such products without the authority or consent of the First Party amounts to infringement of Indian Patent No. 221536. The Second Party CS(COMM) 264/2021 Page 2 of 4 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:14.03.2022 15:03:41 shall provide written proof of its abovementioned communication(s) to the First Party, within 15 days of having issued such communication(s).

g) Subject to the terms herein contained, the Second Party agrees to be bound by a decree of this Hon'ble Court as per paragraphs 70 (a) and (b) as prayed by the First Party in the plaint in CS(COMM) 264 of 2021, and in lieu thereof, the First Party agrees to waive its rights for any further remedy against the Second Party's actions which form a subject matter of the present suit and set forward in the plaint, including prayers contained in paragraphs 70 (c), (d) and (e) of the plaint. The Second Party agrees that it shall not object to any refund of court fee which this Hon'ble Court may grant to the First Party in the aforementioned suit.

h) Notwithstanding the above, the First Party reserves its right to avail any remedy available to it in law or equity against the Second Party in case of any breach of the present terms, including the right to institute a suit for injunction, damages and specific performance of contract.

2. This Court has perused the terms of settlement and the same are found to be lawful.

3. In view of the settlement between the parties, nothing survives for further adjudication in the suit.

4. Suit stands decreed in the terms of Settlement Agreement dated 21.02.2022. The terms of the Settlement Agreement shall form part of the decree.

5. Needless to state, the parties shall remain bound by the terms of the Settlement Agreement and the undertakings given therein.

6. Plaintiffs are entitled to refund of entire Courts Fees deposited by them, in accordance with the provisions of Section 16 of the Court Fee Act, 1870 read with Section 89 CPC, 1908.

CS(COMM) 264/2021 Page 3 of 4 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:14.03.2022 15:03:41

7. Suit stands disposed of along with all pending applications.

8. Registry is directed to draw up the Decree sheet.

JYOTI SINGH, J MARCH 11, 2022 nn CS(COMM) 264/2021 Page 4 of 4 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:14.03.2022 15:03:41

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Delhi High Court - Orders