Himachal Pradesh High Court
Boehringer Ingelheim International vs Femilab Healthcare & Anr on 17 March, 2025
Author: Ajay Mohan Goel
Bench: Ajay Mohan Goel
IN THE HIGH COURT OF HIMACHAL PRADESH, SHIMLA OMP No.1087 of 2024 in COMS No.24 of 2024 Reserved on 11.03.2025 Decided on: 17.03.2025 Boehringer Ingelheim International GmbH & Anr. ... Applicants/Plaintiffs Versus Femilab Healthcare & Anr ... Respondents/Defendants Coram Hon'ble Mr. Justice Ajay Mohan Goel, Judge. Whether approved for reporting?1 ____________________________________________________ _ For the applicants/ plaintiffs. : Mr. Ashok Aggarwal, Senior Advocate, with Dr. Sanjay Kumar, M/s Atul Jhingan, Priyansh Sharma, Ankit Thakur and Sanket Singh Sengar, Advocates.
For the respondents/
defendants : Mr. J.L. Bhardwaj, Senior Advocate, with
Mr. Lakshay Thakur, Advocate, for
respondent-defendant No.1.
Mr. Dinesh Thakur, Advocate, for
respondent-defendant No.2.
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/plaintiffs. 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, 1 Whether reporters of the local papers may be allowed to see the judgment?2
licensees, franchisees, partners, representatives, servants, distributors, employees, stockiest, retailors, agents, sister 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;3
(f) Permit the Applicants/their representatives to take photographs of all the infringing products including labels, 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 owner of Indian Patent Number 268846, which was granted on 18.09.2015 and as the non-applicants/defendants are infringing the Patent of the applicants, they be injuncted from doing so. Said Patent expired on 11.03.2025.
3. This Court, on 06.12.2024, in OMP No.1085 of 2024, has inter alia passed the following order:-
"Notice in above terms.
By way of this application, the applicants have, inter alia, prayed for the following reliefs:-
"Restrain the Respondents by themselves, their directors, licensees, stockists and distributors, agents, sister concerns, subsidiaries 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, exporting and/or stockpiling the medicinal product, Empagliflozin in any form whatsoever including Empagliflozin API, Empagliflozin formulation, "Empagliflozin Tablets", "Empagliflozin + Metformin 4 Hydrochloride Tablets" and/or "Empagliflozin + Linagliptin Tablets" or any "generic version"
thereof or in any combination with Empagliflozin or any product sold under the trade mark(s)/name(s) "Empafine M Forte", "Empafine L 5/25", "Empafine 25 Tablets", "Empafine 10 Tablets" and "Empafine -
L5/10" or any other trade mark/name, whatsoever, or any other product covered by the subject patent granted by the Controller of Patents on September 18, 2015 in favour of Applicant No. 1.
Restrain the Respondents by themselves, their directors, licensees, stockists and distributors, agents, sister concerns, subsidiaries and/or anyone claiming through any of them, jointly and severally from launching, using, offering for sale, selling, importing, exporting and/or dealing with it in any manner, whatsoever, after the expiry of the subject patent, 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 or in any combination with Empagliflozin or any product sold under the trade mark(s)/name(s) "Empafine M Forte", "Empafine "Empafine L 5/25", 25 Tablets", "Empafine 10 Tablets" and "Empafine L 5/10" or any other trade 5 mark/name, whatsoever, or any other product covered by the subject patent granted by the Controller of Patents on September 18, 2015 in favour of applicant No.1 manufactured during the term of the subject matter.
Restrain the Respondents by themselves, their directors, licensees, stockists and distributors, agents, sister concerns, subsidiaries and/or anyone claiming through any of them, jointly and severally from launching the medicinal product, Empagliflozin in any form whatsoever including Empagliflozin API, Empagliflozin formulation, "Empagliflozin Tablets", "Empagliflozin + Metformin and "Empafine L 5/10" or any other trade mark/name, whatsoever, or any other product covered by the subject patent granted by the Controller of Patents on September 18, 2015 in favour of Applicant No. 1 for a period of six month after the expiry of the subject Patent."
Hydrochloride Tablets" and/or "Empagliflozin + Linagliptin Tablets" or any "generic version"
thereof or in any combination with Empagliflozin or any product sold under the trade mark(s)/name(s) "Empafine M Forte", "Empafine L 5/25", "Empafine 25 Tablets", "Empafine 10 Tablets" and "Empafine L 5/10"
or any other trade mark/name, whatsoever, or any other product covered by the subject patent granted by the Controller of Patents on September 18, 2015 in favour of Applicant No. 6 1 for a period of six month after the expiry of the subject Patent."
Learned Senior Counsel for the applicants has submitted that the Subject Patent has been duly granted in favour of applicant No.1 on 18.09.2015 and as the international filing date thereof was 11.03.2005, the date of expiry of the Patent is 11.03.2025. Learned Senior Counsel has further submitted that recently it has come to the notice of the applicants that the non- applicants were infringing the Patent of the applicants by manufacturing and selling the infringing products, details whereof are given in the application. Despite the fact that the respondents do not have any Patent for manufacturing the products in issue, yet by imitating and infringing the Patent of the applicants, the respondents are selling their products in the market to the deterrent of the interest of the applicants. Learned Senior Counsel submits that as the expiry date of the Patent of the applicants is 11.03.2025 in these circumstance, in case, ad-interim injunction is not granted in favour of the applicants, then, the applicants will suffer from irreparable loss in the light of the fact that the respondents would be able to sell their product in the market by infringing the Patent of the applicants without having any legal right to do so. Learned Senior Counsel further submits that in these peculiar circumstances, in case, the prayer for ad-interim injunction is not granted, the applicants will suffer from irreparable loss and the very purpose of filing the suit would be frustrated. Learned Senior Counsel also submits that in the light of the fact that the applicants have a Patent registered in their favour, whereas, the 7 non-applicants do not have so and further, as there is no challenge as upto date to the Patent of the applicants, therefore, prima facie also, there is a case in favour of the applicants and balance of convenience is also in their favour. Having heard learned Senior Counsel for the applicants and having perused the averments made in the application, as this Court finds that a prima facie case has been made out by the applicants for the grant of ad-interim order, therefore, it is ordered that till the next date of hearing, the respondents are restrained either themselves or through their directors, licensees, stockiest and distributors, retailers, agents, servants and/or anyone claiming through any of them, jointly and severally, from infringing the patent rights of plaintiffs/applicants under Indian Patent No. 268846 by launching, advertising making, using, offering for sale, selling, importing and/or exporting the medicinal products Empagliflozin in any form whatsoever, including Empagliflozin API, Empagliflozin formulation "Empagliflozin Tablet" "Empagliflozin + Metformin Hydrochloride Tablets" and/or Empagliflozin + Linagliptin Tablets or any "generic version" thereof in any combination with Empagliflozin or any product sold under the trademark/names "Empafine M forte" "Empafine-L 5/25", "Empafine-25 Tablets" and "Empafine-L 5/10" or any other trademark/name whatsoever, or any other product covered by the subject patent granted by the Controller of Patents on 18.09.2015 in favour of plaintiff/applicant No.1. This order is subject to 8 compliance of provisions of Order 39, Rule 3 of the Code of Civil Procedure."
4. 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 filed alongwith the suit was that as all material evidence is in the possession of the non-
applicants/defendants and the applicants do not have any 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, 9 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."
5. Learned Senior Counsel appearing for non-applicant/ defendant No.1 has submitted that without prejudice to the contentions of the said defendant, defendant No.1 has no objection in case a Commissioner is appointed to ascertain the facts enumerated at Serial Nos. 1 to 3 and 5 to 6 hereinabove, but the non- applicants are resisting what is being demanded under Serial No.4.
6. Learned Counsel appearing for non-applicant/ defendant No.2 has submitted that as the directions are being sought against non-applicant/defendant No.1 only, therefore, no order be passed to the prejudice of defendant No.2.
7. In the light of the fact that learned Senior Counsel appearing for defendant No.1 has stated on instructions that defendant No.1 has no objection for the appointment of a Local Commissioner, except for contentions at Serial No.4 mentioned 10 hereinabove, this Court without any further ado, hereby appoints Shri Ankush Dass, learned Senior Counsel, as Commissioner to do the following:-
"(1) Learned Commissioner shall visit the manufacturing 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 Commissioner 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 Commissioner 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 Commissioner shall 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) Learned Commissioner shall seize and seal the impugned products including labels, cartons, packets, material and things at the site.
(6) Learned Commissioner shall ascertain total value of impugned products manufactured/ sold/offered for sale to parties other than Defendant No. 2."11
8. In addition, learned Commissioner shall also submit his report as to whether there is any record available with defendant No.1 qua the total products manufactured/ sold / recalled or destroyed which are subject matter of the Civil Suit.
9. Let, the premises be visited by Local Commissioner on or before 23.03.2025. The fee of learned Commissioner is fixed at Rs.1,00,000/-, the expenses are fixed at Rs.25,000/-. The fee as well as expenses shall be borne exclusively by the plaintiffs. Same be paid before 23.03.2025. The report be submitted by learned Commissioner on or before the next date of hearing, i.e. 25.03.2025.
Learned Commissioner is permitted to take assistance of the Station House Officer of the area, if required. Learned Commissioner is also allowed to take photographs and videography of the proceedings. Learned Commissioner shall inform the plaintiffs as well as defendant No.1 of the date and time of the visit of the premises in question and he shall be accompanied by a representative of the plaintiffs as well as defendant No.1. Learned Commissioner shall submit his report in a sealed cover to the Court and copies thereof shall not be supplied to the parties by learned Commissioner. The application stands disposed of.
(Ajay Mohan Goel) Judge March 17, 2025 (Rishi)