Delhi High Court - Orders
Incyte Holdings Corporation & Ors vs Bdr Pharmaceuticals Internationals ... on 21 December, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~46
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 927/2023, I.As. 25870/2023, 25871/2023, 25872/2023,
25873/2023, 25874/2023, 25875/2023 & 25876/2023
INCYTE HOLDINGS CORPORATION & ORS. ..... Plaintiffs
Through: Mr. Hemant Singh, Ms. Mamta Rani
Jha, Mr. Siddhant Sharma, Mr. Abhay
Tandon, Mr. Shreyansh Gupta, Advs.
(M. 9650164880)
versus
BDR PHARMACEUTICALS INTERNATIONALS
PRIVATE LIMITED ..... Defendant
Through: Mr. Shashikant Yadav and Ms.
Varsha Jhavar, Advs. (M.
8999260150)
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 21.12.2023
1. This hearing has been done through hybrid mode. I.A. 25874/2023 (for additional documents)
2. This is an application seeking leave to file additional documents under the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter, 'Commercial Courts Act').
3. The Plaintiffs, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act and the DHC (Original Side) Rules, 2018.
4. Application is disposed of.
I.A.25875/2023 (for filing documents in a sealed cover)
5. This is an application filed by the Plaintiffs seeking leave to file CS(COMM) 927/2023 Page 1 of 5 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:36:51 unredacted version of the RTI response dated 31st August, 2023 as well email dated 20th September, 2023 in a sealed cover.
6. Permission is granted, subject to all just exceptions. Accordingly, this application is disposed of.
I.A.25876/2023 (for exemption)
7. This is an application field by the Plaintiffs seeking exemption from filing the pleadings in the present suit with the seal of the companies.
8. Permission is granted, subject to all just exceptions. Accordingly, this application is disposed of.
I.A.25872/2023 (u/S 12A of the Commercial Courts Act)
9. This is an application filed by the Plaintiffs seeking exemption instituting pre-litigation mediation under Section 12A of the Commercial Courts Act.
10. Considering the facts and circumstances of the case, the Court is satisfied that in terms of the judgment of the Hon'ble Supreme Court in Yamini Manohar v. T.K.D Keerthi, SLP(C) 023488/2023, that the present suit contemplates urgent interim relief. Thus, the exemption is granted to the Plaintiffs.
11. Accordingly, the application is disposed of. I.A.25873/2023 (exemption from advance service to the Defendant)
12. Ld. counsel for the Defendant has appeared in this case after noticing it in the cause list.
13. Accordingly, this application is disposed of as infructuous. I.A.25871/2023 (for Local Commissioner)
14. This application has been filed by the Plaintiff seeking appointment of a local commissioner to visit the premises of the Defendant.
CS(COMM) 927/2023 Page 2 of 5This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:36:51
15. This application is not pressed by ld. Counsel for the Plaintiffs. Accordingly, this application is disposed of.
CS (COMM) 927/2023
16. Let the plaint be registered as a suit.
17. Issue summons to the Defendant. Summons are accepted by Mr. Shashikant Yadav, ld. Counsel for the Defendant.
18. The summons to the Defendant shall indicate that a written statement to the plaint shall be positively filed within 30 days from date of receipt of summons. Along with the written statement, the Defendant shall also file an affidavit of admission/denial of the documents of the Plaintiffs, without which the written statement shall not be taken on record.
19. Liberty is given to the Plaintiffs to file a replication within 15 days of the receipt of the written statement(s). Along with the replication, if any, filed by the Plaintiffs, an affidavit of admission/denial of documents of the Defendant, be filed by the Plaintiffs, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
20. List before the Joint Registrar for marking of exhibits on 14th February, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
21. List before Court on 30th April, 2024.
I.A. 25870/2023 (u/O XXXIX Rules 1 & 2 CPC)
22. Issue notice. Notice is accepted by Mr. Shashikant Yadav, ld. Counsel for the Defendant.
23. The present suit has been filed by the Plaintiffs i.e. Plaintiff No.1 - Incyte Holdings Corporation, Plaintiff No.2 - Novartis AG, Plaintiff No.3 -
CS(COMM) 927/2023 Page 3 of 5This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:36:51 Novartis Healthcare Pvt. Limited seeking protection of the patent bearing no. IN 269841. One of the pharmaceutical preparations covered by this patent is in claim no.17 of the patent i.e., "a compound which is (R)-3- cyclopentyl-3 [4-(7H-pyrrolo[2,3-d]pyrimidin- 4-yl)-1H-pyrazol-1-yl] propanenitrile".
24. The INN name of this molecule is 'RUXOLITINIB'.
25. The said pharmaceutical product is an anti-cancer drug, which is a small molecule inhibitor of Janus Kinase sold under the brand name 'JAKAVI' by the Plaintiffs since 2013. It is also stated to have been approved by the USFDA in November, 2011.
26. The present suit is of the nature of an quia timet action as the Plaintiffs have acquired information that the Defendant has obtained manufacturing approval for manufacturing of the compound 'RUXOLITINIB'.
27. Mr. Hemant Singh, ld. Counsel appearing for the Plaintiffs submits that an investigation was conducted by the Plaintiffs, which reveals that the 'RUXOLITINIB' API and/or 'RUXOLITINIB' was manufactured by the Defendant but the commercialization of the same is yet to take place.
28. Ld. counsel for the Defendant has appeared after noticing the matter in the cause list. A complete set of paper books was served upon the ld. counsel and the matter was initially passed over to enable the ld. counsel to take instructions and submit as to whether the product has been commercially launched by the Defendant.
29. Ld. counsel for the Defendant after seeking instructions submits that the product 'RUXOLITINIB' has not been commercially launched by the Defendant, though the approval has been obtained.
CS(COMM) 927/2023 Page 4 of 5This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:36:51
30. In the present case, the suit patent IN269841 has an international filing date of 12th December, 2006 and was granted on ...... The patent has remained unchallenged for the last 17 years. In view thereof, the Court is convinced that the Defendant ought to maintain status quo. Accordingly, the Defendant shall not commercially manufacture or launch the product 'RUXOLITINIB' API and/or 'RUXOLITINIB' without seeking leave of this Court till the next date of hearing.
31. The rights of the Defendant under Section 107A of the Patents Act, 1970 are, however, protected so long as the strict conditions required under the said provision are fully complied with by the Defendant. If the Defendant wishes to move an application seeking variation of this order, it is permitted to do so.
32. Reply to the application be filed within four weeks. Rejoinder thereto within four weeks thereafter.
33. List the application before the Court on 30th April, 2024.
PRATHIBA M. SINGH, J.
DECEMBER 21, 2023/dk/kt CS(COMM) 927/2023 Page 5 of 5 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 23/12/2023 at 02:36:51