Delhi High Court - Orders
Astrazeneca Ab & Anr vs Emcure Pharmaceuticals Limited on 1 October, 2020
Author: Rajiv Shakdher
Bench: Rajiv Shakdher
$~1, 2 and 14
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM)No.407/2020 & I.A. Nos. 8791-95/2020
ASTRAZENECA AB & ANR. .....Plaintiffs
Through : Mr. Sudhir Chandra, Sr. Adv. with
Mr. Pravin Anand, Ms. Vaishali
Mittal, Mr. Rohin Koolwal, Mr.
Siddhant Chamola, Ms. Devyani Nath
and Mr. Souradeep Mukhopadhyay,
Advs.
versus
EMCURE PHARMACEUTICALS LIMITED .....Defendant
Through : Mr. J. Sai Deepak, Mr. Guru Nataraj
and Mr. Avinash K. Sharma, Advs.
+ CS(COMM)No.410/2020 & I.A.Nos.8826-30/2020
ASTRAZENECA AB & ANR. .....Plaintiffs
Through : Mr. Sudhir Chandra, Sr. Adv. With
Mr. Pravin Anand, Ms. Vaishali
Mittal, Mr. Rohin Koolwal, Mr.
Siddhant Chamola, Ms. Devyani Nath
and Mr. Souradeep Mukhopadhyay,
Advs.
versus
INTAS PHARMACEUTICALS LIMITED .....Defendant
Through : Mr. C.S. Vaidyanathan, Sr. Adv. with
Ms. Bitika Sharma, Ms. Namrita
Kocchar, Ms. Nitya Sharma, and Ms.
Vrinda Pathak, Advs.
CS(COMM)No.407/2020, 410/2020 & 411/2020 page 1 of 6
Signature Not Verified
Digitally Signed
By:VIPIN KUMAR RAI
Signing Date:03.10.2020
07:18:20
+ CS(COMM)No.411/2020 & I.A.Nos.8859-64/2020
ASTRAZENECA AB & ANR. .....Plaintiffs
Through : Mr. Sudhir Chandra, Sr. Adv. With
Mr. Pravin Anand, Ms. Vaishali
Mittal, Mr. Rohin Koolwal, Mr.
Siddhant Chamola, Ms. Devyani Nath
and Mr. Souradeep Mukhopadhyay,
Advs.
versus
ALKEM LABORATORIES LIMITED .....Defendant
Through : Mr. Adarsh Ramanujam, with Ms.
Bitika Sharma, Ms. Namrita Kocchar,
Ms. Nitya Sharma, and Ms. Vrinda
Pathak, Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SHAKDHER
ORDER
% 01.10.2020 [Court hearing convened via video-conferencing on account of COVID-19] I.A. No.8792/2020 in CS(COMM)No.407/2020 I.A. No.8827/2020 in CS(COMM)No.410/2020 I.A. No.8860/2020 in CS(COMM)No.411/2020
1. Allowed. The plaintiffs are permitted to file additional documents. 1.1 The additional documents will be filed within 30 days from today. I.A.No.8793/2020 in CS(COMM)No.407/2020 I.A.No.8828/2020 in CS(COMM)No.410/2020 I.A.No.8861/2020 in CS(COMM)No.411/2020
2. Allowed, subject to the plaintiffs curing the deficiencies referred to in the captioned applications within two weeks from today. CS(COMM)No.407/2020, 410/2020 & 411/2020 page 2 of 6 Signature Not Verified Digitally Signed By:VIPIN KUMAR RAI Signing Date:03.10.2020 07:18:20 I.A. No. 8864/2020 in CS (COMM) No. 411/2020
3. This is an application filed by the plaintiffs seeking one week's time to deposit the requisite court-fee along with one-time process fee.
4. For the reasons given in the captioned application, the same is allowed with a direction to the plaintiffs to deposit the requisite court-fee and one-time process fee within one week from today. CS(COMM)No.407/2020, I.A.Nos.8791/2020 & 8794-95/2020 CS(COMM)No.410/2020, I.A.Nos.8826/2020 & 8829-30/2020 CS(COMM)No.411/2020, I.A.Nos.8859/2020 & 8862-63/2020
5. It is the case of the plaintiffs that they are in the business of manufacturing pharmaceutical products. It is asserted that the plaintiffs have patents in a compound known as "Dapagliflozin" [hereafter referred to as "Dapa"].
5.1 According to the plaintiffs, the Indian patents i.e. IN 205147 [which is referred to as the "genus patent"] and IN 235625 [which is referred to as the species patent] were granted on 15.03.2007 and 09.07.2009 respectively. 5.2 The plaintiffs submit that the aforementioned compound i.e. Dapa is used in the treatment of type-2 diabetes and in the prevention of heart failure.
5.3 Mr. Sudhir Chandra, learned senior counsel, who appears on behalf of the plaintiffs, says that up until now there has been no challenge laid to the aforesaid patents either at the pre-grant or the post-grant stage or even by way of revocation proceedings.
5.4 It is also Mr. Chandra's contention that the defendants did not seek a voluntary or a compulsory license qua the above referred patents. CS(COMM)No.407/2020, 410/2020 & 411/2020 page 3 of 6 Signature Not Verified Digitally Signed By:VIPIN KUMAR RAI Signing Date:03.10.2020 07:18:20 5.5 In support of his submissions, Mr. Chandra has relied upon the interim orders passed by the co-ordinate benches of this Court. My attention, in particular, has been drawn to pages 235, 236, 244, 248 and 252 of the documents folder, concerning the plaintiffs, filed in CS (COMM) No. 407/2020.
5.6 Given this position, Mr. Chandra says that the conduct of the defendants attains criticality. In other words, it is his submission that since the defendants did not take recourse to remedies available in law by way of pre-grant or post-grant opposition or exercise their right to seek a revocation, there is a strong prima facie case in favour of the plaintiffs for grant of injunction.
5.7 In support of his plea, Mr. Chandra has relied upon the following judgements:
(i) Merck Sharp & Dohme Corporation & Ors. vs. Glenmark Pharmaceuticals, 2015 (63) PTC 257.
(ii) Bristol Myers Squibb Company vs. J.D. Joshi, 2015 (64) PTC 135 (Del).
6. On the other hand, counsel appearing for the defendants i.e. Mr. J. Sai Deepak, Mr. C.S. Vaidyanathan, learned senior counsel, and Mr. Adarsh Ramanujam contend that the genus patent i.e. IN 205147 expires tomorrow [i.e. 02.10.2020] and insofar the species patent is concerned [i.e. IN 235625 which expires on 15.05.2023], the same stood disclosed in the genus patent. 6.1 It is contended that for the plaintiffs to secure an injunction prior to a trial, they would have to show that the suit patents are prima facie valid.
CS(COMM)No.407/2020, 410/2020 & 411/2020 page 4 of 6 Signature Not Verified Digitally Signed By:VIPIN KUMAR RAI Signing Date:03.10.2020 07:18:20 6.2 According to counsel for the defendants, since the genus patent expires tomorrow i.e. 02.10.2020 and the species patent has already been disclosed, no injunction should be ordered by the Court. 6.3 Mr. Vaidyanathan, in particular, has laid emphasis on the fact that the balance of convenience is in favour of the defendants in view of the fact that the plaintiffs have already granted licenses to two entities i.e. Sun Pharma Laboratories Ltd. and Abbott Healthcare Pvt. Ltd. 6.4 According to Mr. Vaidyanathan, if the plaintiff succeeds, the damages can be quantified. It is also his submission that, therefore, the plaintiffs cannot argue that there will be irreparable damage caused to their interests if an injunction is not granted.
6.5 In support of the submission that the species patent i.e. IN 235625 already stands disclosed in the genus patent, my attention has been drawn by the counsel for the defendants to the documents appended on pages 212 and 246 of the documents filed by the plaintiffs in CS (COMM) No. 410/2020. 6.6 The counsel for the defendants, inter alia, submit that oxygen methyl [OME] and oxygen ethyl [OET] are similar and, therefore, this is a case of evergreening or an attempt by the plaintiff to re-monopolize the compound in issue.
7. On a specific query put to counsel for the defendants as to whether they had commenced manufacture and sale of the product-in-issue, counsel for the defendants stated that they had not and, therefore, there has been no infringement as alleged or at all. It is the response of the counsels for the defendants that up until now, manufacture and sale of the impugned product had not taken place.
CS(COMM)No.407/2020, 410/2020 & 411/2020 page 5 of 6 Signature Not Verified Digitally Signed By:VIPIN KUMAR RAI Signing Date:03.10.2020 07:18:20
8. Mr. Chandra and Mr. Anand refute the submissions made on behalf of the defendants. In particular, it is denied that the species patent i.e. IN 235625 stands disclosed in IN 205147.
9. Given the aforesaid broad contours of the case set up by the parties, in my view, the matter will have to be heard to reach a conclusion, one way or the other, as to whether an injunction should be granted.
10. Accordingly, issue summons in the suit and notice in the captioned applications.
10.1 Mr. Guru Nataraj and Ms. Bitika Sharma accept service on behalf of the defendants in the captioned matters.
10.2 The defendants, in each of the captioned suits, will file their written statements and reply(ies) on or before 08.10.2020. Replication(s) and rejoinder(s) thereto, if any, will be filed before the next date of hearing.
11. List the captioned matters on 12.10.2020.
RAJIV SHAKDHER, J OCTOBER 01, 2020 Aj/KK Click here to check corrigendum, if any CS(COMM)No.407/2020, 410/2020 & 411/2020 page 6 of 6 Signature Not Verified Digitally Signed By:VIPIN KUMAR RAI Signing Date:03.10.2020 07:18:20