Himachal Pradesh High Court
Eris Lifesciences Ltd vs Boehringer Ingelheim Pharma Gmbh & Co. & ... on 6 December, 2023
Bench: M.S. Ramachandra Rao, Jyotsna Rewal Dua
HON'BLE HIGH COURT OF HIMACHAL PRADESH AT SHIMLA OSA No. 3/2023 Decided on: 06.12.2023 .
Eris Lifesciences Ltd. ....Appellant
Versus
Boehringer Ingelheim Pharma GmbH & Co. & Anr. ....Respondents of Coram The Hon'ble Mr. Justice M.S. Ramachandra Rao,Chief Justice. The Hon'ble Ms. Justice Jyotsna Rewal Dua, Judge.
rt Whether approved for reporting?1 For the appellant : Mr. C.M. Lal, Sr. Advocate with Mr. Nitin Thakur, Ms. Abhineeta Chaturvedi, Ms. Shradha Karol, Ms. Vrineta Pathak and Mr. Vaibhav Singh Chauhan, Advocates.
For the respondents : Mr. Ashok Aggarwal, Sr. Advocate with Dr. Sanjay Kumar, Ms. Arpita Sawhney, Mr. Atul Jhingan and Mr. Priyansh Sharma, Advocate.
M.S. Ramachandra Rao (Chief Justice)(Oral) In this appeal, the interim order granted on 08.09.2023 in OMP No.409/2023 filed in COMS no.09/2023 is challenged.
1Whether reporters of the local papers may be allowed to see the judgment?
::: Downloaded on - 07/12/2023 20:32:35 :::CIS 22. The appellant is the defendant in the suit. In the said suit, following reliefs were claimed by the respondents against the .
appellant:-
a) The Defendant by itself, its directors, partners, licensees, stockiest and distributors, agents and/or anyone claiming through any of them, jointly and severally be restrained by a permanent order and injunction of this Hon'ble Court from infringing the patent rights of Plaintiff No. 1 under Indian Patent No. 268846 by launching, of advertising, making, using, offering for sale, selling, importing and/or exporting the medicinal product, Empagliflozin in any form whatsoever including Empagliflozin API, Empagliflozin formulation, "Empagliflozin rt Tablets", "Empagliflozin + Metformin Hydrochloride Tablets" and/or "Empagliflozin and Linagliptin" or any "generic version" thereof or any product sold under the trade mark(s)/name(s) "Linares-E" 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 Plaintiff No. 1;
b) The Defendants be jointly and severally, ordered and decreed to pay to the Plaintiffs a sum of Rupees One Crore two lacs as and by way of damages. In the alternative, the Defendants be directed to render a true and faithful account of the profits made by the Defendants by offering for sale and selling the impugned products and the Defendants be further directed to pay to the Plaintiffs such amount as may be found due and payable on such account being taken;
c) The Defendant by itself, its directors, partners, licensees, stockiest and distributors, agents, servants and/or anyone claiming through or under them be ordered and decreed to deliver up for destruction to the Plaintiffs and/or their representatives/agents or attorneys, the entire stock of the impugned product in their custody or possession that infringes Plaintiff No. 1's subject patent;"::: Downloaded on - 07/12/2023 20:32:35 :::CIS 3
3. Pending disposal of the suit, the respondents also filed OMP no.409/2023 seeking following interim relief:-
.
"Restrain the Respondent by itself, its directors, licensees, stockiest and distributors, agents 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 and/or exporting the medicinal product, Empagliflozin in any form whatsoever including Empagliflozin of API, Empagliflozin formulation, "Empagliflozin Tablets", "Empagliflozin + Metformin Hydrochloride Tablets" and/or "Empagliflozin + Linagliptin Tablets" or any "generic version" thereof or any product sold under the trade mark(s)/name(s) "Linares-E" or any other trade rt 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"
4. Learned Single Judge passed the following order on 08.09.2023 after hearing learned counsel for the parties:-
"CAVEAT No.408 of 2023Allowed and discharged. The application stands disposed of.COMS No.9 of 2023
Notice. Mr. Nitin Thakur, Advocate, appears and waives service of notice on behalf of the defendant. He prays for and is granted time to file written statement.
List on 19.09.2023.OMP No.409 of 2023
Taking into consideration submissions made by learned counsel representing the parties and materials available on record, in my opinion, prima-facie case is made out in favour of the plaintiffs and balance of convenience for passing ad interim injunction also lies in favour of the plaintiffs as there is possibility of causing irreparable loss to them.::: Downloaded on - 07/12/2023 20:32:35 :::CIS 4
Accordingly, till the next date of hearing, the nonapplicant- respondent is restrained either itself or through its 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 plaintiff/applicant No. 1 under Indian Patent No. 268846 by launching, making, using, offering for sale, selling, importing and/or exporting the medicinal product Empagliflozin in any form whatsoever, including Empagliflozin API, the medicinal product "Empagliflozin Tablet" and/or "Empagliflozin + Linagliptin Tablets or any "generic version" thereof or any product sold under the trademark/name of "LINARES-E" or any other trademark/name whatsoever, or any other product covered by the subject patent granted by the Controller of Patents on September 18,2015 in favour of plaintiff/applicant No.1. rt OMPs No. 411, 412 and 413 of 2023 Notice in above terms."
5. Challenging the same, this appeal has been preferred by the appellant/defendant specifically raising a contention that the said order is contrary to the settled principle that conditions precedent for granting an ad-interim injunction such as (i) recording of a finding about existence of prima facie case in favour of the respondents,
(ii) balance of convenience being in favour of the respondents, and (iii) that irreparable injury would be caused to the respondents if the ad-
interim order is not granted, have not been observed by the learned Single Judge.
6. The Hon'ble Supreme Court in Kashi Math Samsthan Vs Srimad Sudhindra Thirtha Swamy & Anr,2 has held that in order to 2 AIR 2010 SCC 296 ::: Downloaded on - 07/12/2023 20:32:35 :::CIS 5 obtain an order of injunction, the party who seeks for grant of such injunction has to prove that he has made out a prima facie case to go .
for trial, that the balance of convenience is also in his favour, and he will suffer irreparable loss and injury if injunction is not granted. This principle has been reiterated subsequently in other decisions of the Hon'ble Supreme Court also.
of
7. Since the impugned order does not record the existence of prima facie case in favour of the respondents or that balance of rt convenience for grant of ad-interim injunction exists in favour of the respondents, and that irreparable injury would be caused if the ad-
interim injunction is not granted, it cannot be sustained.
8. It is accordingly set aside and OMP No.409/2023 is remanded to the learned Singe Judge to hear both the parties and pass an appropriate order in accordance with law.
9. We make it clear that we have not expressed any opinion about the merits of the contention of either parties.
10. We request the learned Single Judge to take up the said application on 15th December 2023, since it is stated by both the sides that the matter is listed on the said date.
::: Downloaded on - 07/12/2023 20:32:35 :::CIS 611. In view of above, the present appeal is disposed of.
Pending miscellaneous applications, if any, shall also stand disposed .
of.
( M.S. Ramachandra Rao ) Chief Justice of (Jyotsna Rewal Dua) Judge rt 06th December, 2023 (rohit) ::: Downloaded on - 07/12/2023 20:32:35 :::CIS