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Novartis Ag & Anr vs Zydus Healthcare Limited & Anr on 21 December, 2021

Author: Yogesh Khanna

Bench: Yogesh Khanna

                                $~13
                                *    IN THE HIGH COURT OF DELHI AT NEW DELHI
                                +    CS(COMM) 681/2021
                                     NOVARTIS AG & ANR.                                      ..... Plaintiffs
                                                      Through : Mr.Hemant Singh and Ms.Mamta
                                                                    Rani Jha, Advocates.
                                                      versus
                                     ZYDUS HEALTHCARE LIMITED & ANR.                     ..... Defendants
                                                      Through : Ms.Bitika Sharma, Ms.Vrinda Pathak
                                                                    and      Mr.vikram   Singh         Dalal,
                                                                    Advocates.
                                     CORAM:
                                     HON'BLE MR. JUSTICE YOGESH KHANNA
                                                      ORDER

                                %                     21.12.2021
                                IA Nos.17155-56/2021

1. Exemption allowed, subject to all just exceptions.

2. The applications stands disposed of.

CS(COMM) 681/2021 & IA Nos.17153/2021

3. Plaintiffs filed this suit for permanent injunction restraining infringement of patent No.IN229051, damages, rendition of accounts, delivery-up etc against the defendants.

4. The learned counsel for the plaintiffs has taken me through an order dated 28.10.2021 passed in CS(COMM) Nos.62/2019, 425/2020, 557/2020, and 156/2021 whereby this Court held:-

59. Accordingly, an injunction is passed in favour of the plaintiffs and against all the defendants restraining the defendants, their agents etc. from manufacturing, importing, selling, offering for sale, etc. any pharmaceutical composition comprising a combination of Valsartan or a pharmaceutically acceptable salt, and Sacubitril or a pharmaceutically acceptable salt and a pharmaceutically acceptable carrier or more specifically a pharmaceutical composition comprising combination of Sacubitril +Valsartan as a sodium salt complex or in any Signature Not Verified Digitally Signed By:VIJAYA LAKSHMI DOBHAL Signing Date:23.12.2021 15:26 other form which may amount to infringement of Indian Patent IN 229051 of plaintiff No.1. All applications i.e. IA No.1803/2019, IA No.9072/2020, IA No.12284/2020 and IA No. 4728/2021 stand disposed of accordingly.

5. The learned counsel for the plaintiff submits this suit is being filed for infringement of IN229051 as a quia-timet action against the defendants. The defendants are group companies known as Zydus Cadila. The plaintiffs came to know the defendant No. 1, Zydus Healthcare Limited has applied for trade mark application for the trade mark, ARNX, bearing number 5089874 before the Trade Marks Registry on 'proposed to be used' basis with the description of goods as "medicinal, pharmaceutical and veterinary preparations for medical purpose, for medical use and clinical preparations ,of valsartan and sacubitil for cardiovascular purposes" on 16.08.2021 which was published in the Trade Marks Journal on 13.09.2021. Further enquiry revealed the defendant No.2, Cadila Healthcare Limited, has filed two patent applications, viz IN2655MUM2015 and IN2016210M625, pertaining to different forms of valsartan and sacubitril tablets and process thereof.

6. The plaintiffs also employed an independent investigating agency for conducting investigation against the defendant No.2 and the investigating agency has submitted its report dated 14.12.2021 which confirms the defendant No.2 has obtained manufacturing license from drug authority i.e. Zonal Office, Ahmedabad CDSCO to manufacture a pharmaceutical formulation of sacubitril / valsartan and intends to commercially launch and supply the same in the market soon.

7. The learned counsel for the defendants appearing on advance notice submits what they have applied for is a different component and drug than Signature Not Verified Digitally Signed By:VIJAYA LAKSHMI DOBHAL Signing Date:23.12.2021 15:26 what is purported to be an infringement of patent No.IN229051. It is further submitted the defendants have never applied for manufacturing license nor it has been obtained.

8. In the circumstances, summons of the suit and notice of injunction application be issued to defendants. The learned counsel for the defendants accepts service and seeks to file written statement and reply. Be filed within the prescribed time with an advance copy thereof to the learned counsel for the plaintiff through email. Replication /rejoinder thereto, if any, be also filed within four weeks thereafter. In the meanwhile, the defendants shall be restrained in terms of para No.20 of the injunction application till the next date of hearing.

9. The affidavit of admission/denial be also filed. List for completion of the pleadings before the learned Joint Registrar on 05.04.2022.

10. Upon completion of service/pleadings, the matter be listed before this Court.

11. At the request of learned counsel for the plaintiffs, this application is kept in abeyance till further orders.

YOGESH KHANNA, J.

DECEMBER 21, 2021 M Signature Not Verified Digitally Signed By:VIJAYA LAKSHMI DOBHAL Signing Date:23.12.2021 15:26